DECISION

The Neiman Marcus Group, Inc. and NM Nevada Trust v. Horoshiy, Inc. a/k/a Horoshiy

Claim Number:  FA0410000338381

PARTIES

Complainant is The Neiman Marcus Group, Inc. and NM Nevada Trust (collectively, “Complainant”), represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660.  Respondent is Horoshiy, Inc. a/k/a Horoshiy (“Respondent”), FD. Rooseveltweg #518, Curacao, AN.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <marcusneiman.com>, registered with Nameking.com, Inc.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 1, 2004; the Forum received a hard copy of the Complaint on October 1, 2004.

On October 1, 2004, Nameking.com, Inc. confirmed by e-mail to the Forum that the domain name <marcusneiman.com> is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. 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 October 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 2004 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@marcusneiman.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 November 3, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 <marcusneiman.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.

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

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

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

FINDINGS

In 1907, The Neiman Marcus Group, Inc. established a retail chain that has since become an internationally recognized innovator in fashion and merchandise.  Complainant has used the NEIMAN MARCUS mark in connection with its apparel-related goods and services since 1939. 

Complainant, NM Nevada Trust, owns several United States trademark registrations for the NEIMAN MARCUS marks (e.g. Reg. No. 601,375, issued April 6, 1954), which it licenses to The Neiman Marcus Group, Inc. (collectively, hereinafter “Complainant”).  Complainant has been the exclusive user of the NEIMAN MARCUS mark in the United States since as early as 1907, and has been using the mark continuously in commerce for the past 97 years. 

Respondent registered the <marcusneiman.com> domain name on August 22, 2004 and is using it to display banner ads and pop-up ads and links to redirect Internet users to various other webpages offering the same apparel-related products and services as Complainant.

Respondent has a long history of registering domain names incorporating marks of various third parties.  See Avery Dennison v. Horoshiy, Inc. FA 289048 (Nat. Arb. Forum Aug. 2, 2004).

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 that it has rights in the NEIMAN MARCUS mark through registration with the United States Patent and Trademark Office and through continued use of its mark in commerce for the last 97 years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <marcusneiman.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark because the domain name includes Complainant’s mark in its entirety, with the exception that the words in the domain name are transposed.  The Panel finds that, similar to the transposition of letters in a domain name, the transposition of words in a mark is insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i).  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to Complainant's PIER 1 mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant alleges Respondent has no rights or legitimate interests in the <marcusneiman.com> domain name containing Complainant’s NEIMAN MARCUS mark.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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).

Additionally, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <marcusneiman.com> domain name to misdirect Internet users to a commercial website displaying banner advertisements and links to websites that offer apparel-related goods similar to those offered by Complainant.  Respondent’s use of a domain name confusingly similar to Complainant’s NEIMAN MARCUS mark to redirect internet users interested in Complainant’s products to commercial websites offering goods and services similar to those offered by Complainant is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).

Respondent is not known individually, as a business, or in any other manner by the <marcusneiman.com> domain name.  Complainant has not licensed Respondent to use the NEIMAN MARCUS mark, nor does Respondent have any legal relationship with Complainant that would entitle it lawfully to use Complainant’s NEIMAN MARCUS mark.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and used the <marcusneiman.com> domain name in bad faith and for commercial gain.  Respondent registered the domain name with the intention of attracting Internet users who mistakenly identify the <marcusneiman.com> domain name with Complainant’s NEIMAN MARCUS mark.  Respondent’s bad faith is evidenced by the display of banner advertisements, pop-up ads and commercial links on Respondent’s webpage.  Respondent derives economic gain from redirecting Internet users and receiving compensation from the advertisements located on the webpage in addition to click through fees from the pop-up ads and third-party links.  Respondent’s conduct constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding Respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to Complainant’s <deluxeforms.com> domain name, thus receiving a commission from Complainant through its affiliate program); see also 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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). 

Additionally, Respondent has been involved in at least one previous domain name dispute under the Policy where bad faith was found based on similar facts.  The Panel finds that the prior administrative proceeding and Respondent’s current use of the disputed domain name evidences a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Calvin Klein, Inc. v. Spanno Indus., FA 95283 (Nat. Arb. Forum Aug. 21, 2000) (finding that Respondent has registered numerous domain names containing sexual references and domain names which are confusingly similar to third party trademarks; which points to a pattern of conduct on the part of Respondent, revealing that Respondent is registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent,  D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <marcusneiman.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  November 17, 2004

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