DECISION

The Neiman Marcus Group, Inc. v. Music Wave

Claim Number:  FA0304000153537

PARTIES

Complainant is The Neiman Marcus Group, Inc., Dallas, TX, USA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is Music Wave, Geneva, CH (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.Com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 31, 2003; the Forum received a hard copy of the Complaint on April 2, 2003.

On April 4, 2003, Computer Services Langenbach Gmbh d/b/a Joker.Com confirmed by e-mail to the Forum that the domain names <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com> are registered with Computer Services Langenbach Gmbh d/b/a Joker.Com and that Respondent is the current registrant of the names. Computer Services Langenbach Gmbh d/b/a Joker.Com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 24, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@neimunmarcus.com, postmaster@neminmarcus.com, postmaster@newmanmarcus.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 5, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com> domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark.

2. Respondent does not have any rights or legitimate interests in the <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com> domain names.

3. Respondent registered and used the <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, The Neiman Marcus Group, Inc., holds several trademark registrations for the NEIMAN MARCUS mark (e.g., U.S. Reg. No. 1,733,202, registered on the Principal Register of the U.S. Patent and Trademark Office on November 17, 1992). Complainant has operated under this mark since 1907 as a specialty retailer of high priced fashion apparel and merchandise. Complainant operates thirty-five retail stores in the U.S. as well as an online retail website at the <neimanmarcus.com> domain name. Under the NEIMAN MARCUS mark, Complainant generated hundreds of millions of dollars in sales revenues during the past year.

Respondent, Music Wave, registered the <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com> domain names on January 25, 2002, and is not licensed or authorized to use Complainant’s NEIMAN MARCUS mark for any purpose. Respondent redirects Internet users who access the disputed domain names to an adult-oriented website at <hanky-panky-college.com> while also displaying pop-up advertisements.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the NEIMAN MARCUS mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the mark in commerce for nearly a century.

Respondent’s <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com> domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark. Each domain name is a simple misspelling of the word NEIMAN in Complainant’s distinctive mark, either by replacing the letter “a” with a different vowel or altering the spelling of the first syllable of Complainant’s mark. The overall impression of the disputed domain names remains Complainant’s mark, and each is confusingly similar to that mark for purposes of Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Accordingly, the Panel finds that the <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com> domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

On this element, as on every provision under Policy paragraph 4(a), Complainant carries the initial burden of demonstrating that Respondent has no rights or legitimate interests in the disputed domain name. Complainant is able to meet this burden by showing that Respondent would not be able to rely upon the examples of circumstances demonstrating rights or legitimate interests in a domain name listed in Policy ¶¶ 4(c)(i)-(iii). In making such a showing, Complainant establishes a prima facie case against Respondent, shifting the burden to Respondent. As Respondent failed to file a response to the Complaint, Respondent’s default results in an inference that it has no rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent uses the disputed domain names, each infringing on Complainant’s distinctive NEIMAN MARCUS mark, to redirect Internet users to an adult-oriented website. Using Complainant’s mark to misdirect Internet users who inadvertently type in the URL for one of the disputed domain names instead of Complainant’s website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Considering  that those misdirected Internet users are also subjected to a series of pop-up advertisements, Respondent’s misdirection also fails to qualify as a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with a bona fide offering of goods or services or any other fair use).

Given the widespread fame and goodwill surrounding the distinctive NEIMAN MARCUS mark and the fact that Respondent’s domain names are mere misspellings of this mark, the Panel finds that Respondent is not “commonly known by” any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Each of the infringing domain names relies on the fact that they are misspellings of Complainant’s NEIMAN MARCUS mark to attract Internet users. Such infringements on Complainant’s mark are likely to confuse Internet users who mistakenly access the disputed domain names as to whether Complainant sponsors, or is somehow affiliated with, the domain names. This likelihood of confusion earns Respondent commercial gain, i.e. the revenue Respondent presumably receives from both pop-up advertisements and referral fees from the <hanky-panky-college.com> domain name. Thus, Respondent’s activities evidence bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

The Panel thus finds that Respondent registered and used the <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <neimunmarcus.com>, <neminmarcus.com> and <newmanmarcus.com> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  May 12, 2003

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