DECISION

The Neiman Marcus Group, Inc. and NM Nevada Trust v. Peter Carrington and Party Night Inc.

Claim Number:  FA0304000153535

PARTIES

Complainant is The Neiman Marcus Group, Inc. and NM Nevada Trust, Dallas, TX, USA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is Peter Carrington and Party Night, Inc., Amsterdam, THE NETHERLANDS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chefscatlog.com>, registered with Key-Systems Gmbh.

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 1, 2003.

On April 4, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain name <chefscatlog.com> is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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@chefscatlog.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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <chefscatlog.com> domain name is confusingly similar to Complainant’s CHEF’S CATALOG mark.

2. Respondent does not have any rights or legitimate interests in the <chefscatlog.com> domain name.

3. Respondent registered and used the <chefscatlog.com> domain name in bad faith.

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

FINDINGS

Complainant, NM Nevada Trust and The Neiman Marcus Group, Inc., owns and is licensed to use the CHEF’S CATALOG mark. This mark was first used in commerce in February of 1979, and was registered on the Principal Register of the U.S. Patent and Trademark Office on February 8, 2000 (U.S. Reg. No. 2,316,722). Under the CHEF’S CATALOG mark, Complainant owns and operates a mail order catalog in the field of cookware, kitchenware, dinnerware, cutlery, culinary publications and related accessories. Since 1996, Complainant has also operated an online retail service for these products at the <chefscatalog.com> domain name.

Respondent, Peter Carrington and Party Night Inc., registered the <chefscatlog.com> domain name on November 23, 2002, and is not licensed or authorized to use Complainant’s CHEF’S CATALOG mark for any purpose. Respondent, who has been brought before three administrative Panels in the past for infringing on Complainant’s marks (e.g., The Neiman Marcus Group, Inc. v. Party Night, Inc., FA 135019 (Nat. Arb. Forum July 23, 2002)), uses the disputed domain name to redirect Internet users to an adult-oriented website at the <hanky-panky-college.com> domain name. Internet users accessing the disputed domain name are also subjected to various 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 CHEF’S CATALOG mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through use of the mark in commerce. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <chefscatlog.com> domain name is confusingly similar to Complainant’s CHEF’S CATALOG mark. The domain name would be identical to the mark if not for the deletion of the letter “a” from the word CATALOG and the elimination of the apostrophe from the word CHEF’S—a character that is unreproducible in a URL. Respondent’s registration of a domain name that differs by one letter from Complainant’s mark does not create a distinct domain name, but rather one which is confusingly similar to the CHEF’S CATALOG mark. See 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); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).

Accordingly, the Panel finds that the <chefscatlog.com> domain name is confusingly similar to Complainant’s CHEF’S CATALOG mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Although the Complaint alleges otherwise, it is Complainant, and not Respondent, who bears the initial burden of proving that Respondent has no rights or legitimate interests in the disputed <chefscatlog.com> domain name. In a default setting, Complainant can meet this burden with a showing that Respondent is not making a “bona fide offering of goods or services” with the domain name, is not “commonly known by” the domain name, and is making no “legitimate noncommercial or fair use” of the domain name. In demonstrating that these three criteria, listed in Policy ¶¶ 4(c)(i)-(iii), do not apply to Respondent, Complainant’s burden shifts to Respondent. At that point Respondent’s failure to respond will result in a finding for Complainant on this element. 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).

However, the Panel does choose to view Respondent’s lack of response in this dispute as evidence that it lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of Complainant’s mark in connection with Respondent’s website is misleading and Respondent is intentionally diverting business from Complainant).

Complainant alleges that Respondent uses the <chefscatlog.com> domain name to redirect Internet users to an adult-oriented website at the <hanky-panky-college.com> domain name. These same Internet users are subjected to a series of pop-up advertisements, presumably to the commercial benefit of Respondent. By misdirecting Internet users who misspell Complainant’s registered trademark or domain name for commercial gain, Complainant has demonstrated that Respondent is not making a “bona fide” offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name 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).

Complainant alleges that Respondent, a notorious cybersquatter, is not “commonly known by” the name CHEFS CATLOG or <chefscatlog.com>. As Complainant appears to be known as “Peter Carrington” and “Party Night, Inc,” and there is no other evidence to the contrary, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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>).

Complainant has successfully met its burden under Policy ¶ 4(a)(ii), shifting that burden to Respondent. As Respondent failed to respond to the Complaint, Complainant prevails on this element.

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

Registration and Use in Bad Faith

Respondent registered a domain name that duplicates Complainant’s trademark and domain name, minus the letter “a” in the word CATALOG. In registering a domain name that merely mimics a typographical error, Respondent intentionally created a likelihood of confusion in the minds of misdirected Internet users as to the source or sponsorship of the disputed domain name. Through its use of pop-up advertisements, and the presumed profit it receives from redirecting Internet users to an adult-oriented website, Respondent takes advantage of this likelihood of confusion for commercial gain. Such use and registration is evidence of bad faith 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 <chefscatlog.com> domain name 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 <chefscatlog.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  May 12, 2003

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