DECISION

The Neiman Marcus Group, Inc. v. Alvaro Collazo

Claim Number:  FA0403000248954

PARTIES

Complainant is The Neiman Marcus Group, Inc. (“Complainant”), represented by David J. Steele, of Christie Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660.  Respondent is Alvaro Collazo (“Respondent”), Manuel Oribe 2028, Tarariras, Colonia 70000, R.O.U.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwbergdorfgoodman.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 24, 2004; the Forum received a hard copy of the Complaint on March 24, 2004.

On March 24, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain name <wwwbergdorfgoodman.com> is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.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 March 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 19, 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@wwwbergdorfgoodman.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 April 29, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <wwwbergdorfgoodman.com> domain name is confusingly similar to Complainant’s BERGDORF GOODMAN mark.

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

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

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

FINDINGS

Complainant owns and operates the world-famous “Bergdorf Goodman” retail stores.  In connection therewith, Complainant owns numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the BERGDORF GOODMAN mark including registration numbers 674,632 (issued Feb. 24, 1959 for “ladies’ coats, suits, and dresses”), 992,733 (issued Sept. 3, 1974 for “retail specialty department store services”), 866,011 (issued Mar. 11, 1969 for “perfumes, cologne, bath oil, dusting powder, shaving soap, after shave lotion, personal deodorants, and hair dressings”), and 845,203 (issued Feb. 27, 1968 for “fur storage service”).

Respondent registered the disputed domain name <wwwbergdorfgoodman.com> on March 2, 2004.  The domain name is not attached to an active website.

Previously, Respondent signed a written agreement with Complainant to refrain from cybersquatting upon Complainant’s marks.  Paragraph 4 of the written agreement, which was dated June 10, 2003, includes the following forbiddance:

4.  Subsequent Restriction on Addition Domain Name Registrations.  After execution of this Agreement, [Respondent] agrees not to register any Internet domain name that uses or incorporates, in whole or in part, [The Neiman Marcus Group, Inc.] TRADEMARKS or any combination thereof, or any confusingly similar mark thereto, without the express prior written consent of a corporate officer of [The Neiman Marcus Group, Inc.].

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 BERGDORF GOODMAN mark as a result of its registrations with the USPTO. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that the 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; see also 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.”).

Domain names that contain third-party marks in their entirety and merely affix the prefix “www” to the marks have consistently been found to be confusingly similar to the marks under the Policy.  In this case, the disputed domain name contains Complainant’s BERGDORF GOODMAN mark in its entirety, along with the prefix “www.” Consequently, the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”; see also Marie Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark; see also Dana Corporation v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature.

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Failing to respond to a complaint under the Policy has been consistently held as evidence that a respondent lacks rights and legitimate interests in a disputed domain name.  Here, Respondent has failed to respond to the Complaint.  Therefore, the Panel may construe Respondent’s failure as an implicit admission that it lacks rights and legitimate interests in the 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) finding no rights or legitimate interests where Respondent fails to respond.

Respondent has registered a domain name confusingly similar to Complainant’s mark.  The domain name is an obvious misspelling of Complainant’s mark intended to capitalize on a frequent Internet-user mistake, forgetting to type a period after “www”.  The Panel finds that this use does is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the name under Policy ¶ 4(c)(iii).  See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) finding that fair use does not apply where the domain names are misspellings of Complainant's mark; see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant.  There is nothing in the record to indicate that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark.

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant has asserted that Respondent has registered and used the disputed domain name in bad faith.  Respondent has failed to rebut this assertion.  Therefore, the Panel may reasonably infer that Respondent has registered and used the domain name in bad faith under Policy ¶ 4(a)(iii).  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vert. 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.

The factors listed in Policy ¶ 4(b) are intended to be illustrative and non-exclusive of other factors that may lend the inference of bad faith registration and use to a panel.  Thus, circumstances outside the expressly outlined factors may be considered by the Panel in reaching its conclusions.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).

Respondent has engaged in the practice of typosquatting.  Typosquatting, itself, is evidence of bad faith registration and use under the Policy. See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) holding that an “absence of a dot between the ‘www’  and ‘canadiantire.com’ [in the <wwwcanadiantire.com> domain name is] likely to confuse Internet users, encourage them to access Respondent’s site” and evidenced bad faith registration and use of the domain name.

The fact that Respondent entered into a written agreement with Complainant means that Respondent had actual knowledge of Complainant’s rights in its marks.  Respondent willfully ignored or disregarded such rights, which is evidence of bad faith registration and use under the Policy. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."). 

Moreover, any future use of the domain name confusingly similar to Complainant’s mark would merely allow Respondent to capitalize from Internet-user mistakes that occur in the process of searching for Complainant.  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with Complainant’s mark

Complainant has established Policy ¶ 4(a)(iii).

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 <wwwbergdorfgoodman.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  May 13, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/607.html