national arbitration forum

DECISION

The Neiman Marcus Group, Inc. & NM Nevada Trust v. SecureWhois, Inc.

Claim Number:  FA0411000373470

PARTIES

Complainant is The Neiman Marcus Group, Inc. & 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 SecureWhois, Inc. (“Respondent”), 904 S. Roselle Road #136, Schaumburg, IL 60193.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lastcallneimanmarcus.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 30, 2004.

On December 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 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@lastcallneimanmarcus.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On January 3, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <lastcallneimanmarcus.com> domain name is confusingly similar to Complainant’s LAST CALL and NEIMAN MARCUS marks.

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

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

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

FINDINGS

Complainant’s principal retail chain was established in 1907 as a local specialty store and has become an internationally recognized innovator in fashion and merchandise.  Since 1999, Complainant has operated a commercial website at the <neimanmarcus.com> domain name.

Complainant has used its NEIMAN MARCUS mark in connection with its goods and services since at least as early as 1907.  Complainant has also used the LAST CALL mark in connection with its retail outlet stores since 1979.  Complainant has registered the NEIMAN MARCUS (Reg. No. 601,375 issued January 25, 1955) and LAST CALL (Reg. No. 1,774,545 issued June 1, 1993) marks with the United States Patent and Trademark Office (“USPTO”).  

Respondent registered the <lastcallneimainmarcus.com> domain name on September 25, 2004.  Respondent’s domain name resolves to a generic portal website featuring multiple 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 established rights in the NEIMAIN MARCUS and LAST CALL marks through registration with the USPTO and continuous use of the marks in commerce.  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 domain name is confusingly similar to Complainant’s marks.  Respondent’s domain name merely combines Complainant’s marks in one domain name.  The mere combination of Complainant’s two marks does not suddenly create one new distinctive mark, and thus is not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”).

Furthermore, the addition of the generic top-level domain “.com” is insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s marks pursuant Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).

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

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept complainant’s allegations as true).

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain name.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s marks.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 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 mark precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent is using the domain name to operate a generic portal page featuring numerous pop-up advertisements.  Respondent makes opportunistic use of Complainant’s mark in order to capitalize on the goodwill and fame associated with the NEIMAN MARCUS and LAST CALL marks. Such use of the domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate, non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).  See 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); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

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

Registration and Use in Bad Faith

Respondent’s registration of the <lastcallneimanmarcus.com> domain name, which is a confusingly similar combination of Complainant’s well-known LAST CALL and NEIMAN MARCUS marks, suggests that Respondent knew of Complainant’s rights in the marks. Additionally, Complainant’s numerous trademark registrations on file at the USPTO gave Respondent constructive notice of Complainant’s marks. Therefore, the Panel finds that Respondent chose the disputed domain name based on the distinctive and well-known qualities of Complainant’s marks, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Furthermore, Respondent’s domain name resolves to a portal website featuring numerous pop-up advertisements.  The Panel infers that Respondent receives click-through fees for redirecting Internet users to these other websites.  Such unauthorized commercial use of Complainant’s marks in a confusingly similar domain name is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See 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)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

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

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated:  January 17, 2005

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