DECISION

The Neiman Marcus Group, Inc. v. Party Night Inc.

Claim Number: FA0205000114350

PARTIES

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

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <neimanmarcas.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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 20, 2002; the Forum received a hard copy of the Complaint on May 23, 2002.

On May 22, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the domain name <neimanmarcas.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 May 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 13, 2002 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@neimanmarcas.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 July 1, 2002, 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

1. Respondent’s <neimanmarcas.com> domain name is confusingly similar to Complainant’s registered NEIMAN MARCUS mark.

2. Respondent has no rights or legitimate interests in the <neimanmarcas.com> domain name.

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

B. Respondent did not submit a Response.

FINDINGS

Complainant owns several U.S. Patent and Trademark Office (“USPTO”) registrations, including: Reg. No. 601,375 first used in 1907; Reg. No. 601,864 first used in 1939; and, Reg. No. 1,593,195 first used in 1965.

Complainant’s retail chain was established in 1907 as a local specialty store and has since become an internationally recognized innovator in fashion and merchandise. As a result of nearly a century of use, the Complainant has made its NEIMAN MARCUS mark one of the most famous and distinctive trademarks in retailing. The NEIMAN MARCUS family of trademarks has valuable goodwill and an internationally established reputation.

Respondent registered the disputed domain name on April 30, 2002. Respondent has used the dispute domain in conjunction with a pornographic website located at the <hanky-panky-college.com> domain. Respondent’s attached website offers a variety of pornographic services, such as XXX passwords and various websites containing pornographic content.

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 the 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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 its rights in the NEIMAN MARCUS mark through registration with the USPTO and subsequent continuous use for nearly a century.

Respondent’s <neimanmarcas.com> domain name is confusingly similar to Complainant’s mark. Respondent is engaging in typosquatting, the intentional registration of a domain name that is a misspelling of a distinctive or famous mark.

In the present case, Respondent’s domain name is identical, except for replacing the “u” in Complainant’s NEIMAN MARCUS mark with an “a”. Such a slight deviation fails to detract from the overall presence of Complainant’s mark. Furthermore, because the pronunciation of the “u” sound in Complainant’s MARCUS mark is often pronounced as an “a” sound, Internet users are likely to misspell the mark. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and the Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change the Respondent’s infringement on a core trademark held by Complainant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Because Respondent has not submitted a Response in this proceeding, the Panel may presume it has no rights or interests in respect of the disputed domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed). Furthermore, Respondent’s failure to respond allows all reasonable inferences made by Complainant to be deemed true. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent’s registration of a domain name that emulates a famous mark, save one indistinguishable difference, fails to establish Respondent’s rights and legitimate interests in the disputed domain name. Respondent’s actions represent an attempt to divert Internet traffic to its website while opportunistically trading on Complainant’s established goodwill. Respondent’s actions are not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor do they represent a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use); see also  MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website).

Additionally, Respondent’s use of Complainant’s famous NEIMAN MARCUS mark by creating a perceived affiliation between Complainant and Respondent’s pornographic websites does not establish rights under Policy ¶ 4(a)(ii). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also  MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).

Respondent is not commonly known by “neimanmarcas” or <neimanmarcas.com> pursuant to Policy ¶ 4(c)(ii). It is not apparent, and Respondent has not provided any evidence, that Respondent is known by the disputed domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); 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 Respondent has failed to establish rights to and legitimate interests in the <neimanmarcas.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because of the famous and distinct nature of Complainant’s mark, the international presence and use of the NEIMAN MARCUS mark for nearly a century, Respondent is thought to have been on notice as to the existence of Complainant’s preexisting rights in the mark. Respondent did not coincidentally register the <neimanmarcas.com> domain name. Respondent’s registration and use of a confusingly similar domain name despite knowledge of another’s rights represents bad faith under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also 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).

Respondent registered <neimanmarcas.com>, a domain name that is confusingly similar to Complainant’s mark, in order to trade on Complainant’s goodwill and create confusion as to the source or sponsorship of its website. Such behavior demonstrates bad faith registration and use within the meaning of Policy ¶ 4(b)(iv). Respondent’s sole purpose in registering the domain name was to maximize the amount of Internet traffic it could divert to its website, thereby commercially benefiting from the confusion.  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain). 

Respondent intentionally registered a domain name bearing an uncanny resemblance to Complainant’s NEIMAN MARCUS mark. Respondent’s domain name redirects unsuspecting Internet users to a pornographic website that utilizes the devious mouse- trapping technique that deliberately compounds the amount of confusion. Respondent’s commercial gain from linking Complainant’s mark to pornographic images represents bad faith registration and use under Policy ¶ 4(a)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see generally Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith).

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 the requested relief should be hereby GRANTED.

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

John J. Upchurch, Panelist

Dated: July 9, 2002

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