DECISION

The Neiman Marcus Group, Inc. v. Domain Contact

Claim Number:  FA0406000282362

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 Domain Contact (“Respondent”), 123456789, Seattle, WA 12345.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <neimanmarcusonline.com>, registered with Namescout.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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 28, 2004; the Forum received a hard copy of the Complaint on June 1, 2004.

On June 8, 2004, Namescout.com confirmed by e-mail to the Forum that the domain name <neimanmarcusonline.com> is registered with Namescout.com and that Respondent is the current registrant of the name. Namescout.com has verified that Respondent is bound by the Namescout.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 June 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 29, 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@neimanmarcusonline.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 July8,2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 <neimanmarcusonline.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.

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

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

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

FINDINGS

Complainant, The Neiman Marcus Group, Inc., was established in 1907 as a local specialty store and has become an internationally recognized innovator in fashion and merchandise.  Complainant has developed a reputation for high prices as well as high quality, which has made the “Neiman Marcus” name synonymous with high fashion and world famous designers. 

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the NEIMAN MARCUS mark (Reg. No. 601,375, issued April 6, 1954, Reg. No. 601,864, issued May 19, 1954, Reg. No. 601,723, issued February 1, 1955, Reg. No. 1,593,195, issued October 5, 1988, Reg. No. 1,733,202, issued October 25, 2991).  Complainant has used the NEIMAN MARCUS mark continuously and extensively in connection with its retail business since 1907.  As a result of nearly a century of use, Complainant has created in NEIMAN MARCUS one of the most famous and distinctive marks in retailing.  The NEIMAN MARCUS trademarks have an invaluable goodwill and reputation, not only in the United States, but also throughout the world.  Complainant operates 35 Neiman Marcus stores located in premier retail locations in major markets nation wide.  Thus, Complainant’s marks are well-known to the public.

Respondent registered the <neimanmarcusonline.com> domain name on April 8, 2004 and is using the domain name to redirect Internet users to a website that hosts a search engine which provides links to a variety of websites and features a variety of advertisements.  Respondent’s website also offers links to other websites that directly compete with Complainant’s business.

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 in this proceeding that it has rights in the NEIMAN MARCUS mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last ninety-seven 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 <neimanmarcusonline.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark because the domain name incorporates Complainant’s mark and only deviates with the addition of the generic or descriptive word “online.”  The mere addition of a generic or descriptive term does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <Westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

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

Rights or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in the mark and has alleged that Respondent has no such rights or legitimate interests in the domain name that contains in its entirety Complainant’s 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 it allegations, the burden shifts to Respondent to show that it does have such rights to or legitimate interests in the domain name 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 legitimte 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); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Moreover, where Complainant makes the prima facie case 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) (“In 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 Complaint to be deemed true).

Respondent is using the <neimanmarcusonline.com> domain name to redirect Internet users to a website that features advertising for a variety of goods and that hosts a popular search engine to link viewers to a variety of websites, including sites that offer the same type of goods that complainant offers.  Respondent’s use of a domain name that is confusingly similar to Complainant’s NEIMAN MARCUS mark to redirect Internet users interested in Complainant’s products to a commercial website that offers a popular search engine unrelated to Complainant’s products is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(a)(i) and it is not a legitimate noncommericial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Ban of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding 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 U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fie offering of goods or services).

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <neimanmarcusonline.com> domain name.  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 interests 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 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).

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

Registration and Use in Bad Faith

Respondent registered the disputed domain name for commercial gain.  Respondent’s domain name diverts Internet users wishing to search under Complainant’s well-known mark to Respondent’s commercial website through the use of a domain name confusingly similar to Complainant’ mark.  Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, Inc. v. Petersons Auto. a/k/a Larry Petersons, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness).

Furthermore, Respondent is using the disputed domain name to redirect Internet users to a website that hosts a search engine which provides links to a variety of websites that directly compete with Complainant’s business.  The Panel finds that, by creating confusion around Complainant’s mark, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s mark to redirect Internet users to websites offering goods similar to Complainant’s goods is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EBAY, Inc. v. MEOdesigns & Matt Oettinger, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites).

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

James A. Crary, Panelist

Dated:  July 26, 2004

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