DECISION

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

Claim Number: FA0206000114546

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., Geneva, SWITZERLAND (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <neimanmacus.com>, registered with Joker.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 10, 2002; the Forum received a hard copy of the Complaint on June 12, 2002.

On June 12, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <neimanmacus.com> is registered with Joker.com and that Respondent is the current registrant of the name.  Joker.com has verified that Respondent is bound by the Joker.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 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 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@neimanmacus.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 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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

The <neimanmacus.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.

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

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

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns several trademark registrations for NEIMAN-MARCUS and NEIMAN MARCUS with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg Nos. 601,375; 601,864; 601,723, 1,593,195; and 1,733,202).  Complainant first used the NEIMAN MARCUS mark in 1907 in connection with a specialty-clothing store.  Over the years, Complainant has developed into an internationally recognized innovator in fashion and merchandise.  Complainant’s use of the NEIMAN MARCUS mark for nearly a century has resulted in international recognition of the mark.

In 1999, Complainant expanded its retail operations to include e-commerce.  Complainant developed a commercial retail website at <neimanmarcus.com> to facilitate its e-commerce expansion efforts. 

Respondent registered the <neimanmacus.com> domain name on March 4, 2002.  Respondent uses the domain name to direct Internet users to a pornographic website located at <hanky-panky-college.com>.  At this website, banner advertisements are displayed, which in turn provide a source of revenue for Respondent. 

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 rights in the NEIMAN MARCUS mark through registration with the USPTO and continuous use since 1907.

Respondent’s <neimanmacus.com> domain name represents a simple misspelling of Complainant’s NEIMAN MARCUS mark.  Respondent’s domain name is a classic example of typosquatting, the process of registering a common misspelled version of a famous mark in a domain name.  It has been consistently held that typosquatting renders the domain name confusingly similar to the altered famous mark.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainant’s STATE FARM mark); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

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

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the <neimanmacus.com> domain name and Respondent’s failure to respond, the Panel may presume that Respondent has no such rights or 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).  Furthermore, because Respondent did not submit a Response, all reasonable inferences may be drawn in favor of Complainant.  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 uses the <neimanmacus.com> domain name to link to a pornographic website located at <hanky-panky-college.com>.  Respondent commercially benefits from this use because once an Internet user is diverted to the pornographic website banner advertisements pop-up.  Altering Complainant’s famous mark for purposes of capturing Internet consumers searching for Complainant does not constitute legitimate rights and interests in the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); 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 tarnish the Complainant’s mark).

Respondent is not commonly known as NEIMAN MACUS or <neimanmacus.com>.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <neimanmacus.com> domain name, thus, Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

The Panel is not limited to the circumstances presented in Policy ¶ 4(b) when determining bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). The Panel must consider the totality of circumstances when deciding whether Respondent registered and/or used the domain name in bad faith.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Complainant has developed a substantial amount of international goodwill in relation to its NEIMAN MARCUS mark over the years.  Also, Respondent previously registered the <neimanmarcas.com> domain name and used it in the exact same manner it presently uses <neimanmacus.com>.   Due to the aforementioned circumstances, it is clear that Respondent was put on notice of Complainant’s interests in the NEIMAN MARCUS mark. Respondent’s misspelling of Complainant’s famous mark in its domain name represents an opportunistic attempt to trade off of Complainant’s established goodwill.  Therefore, Respondent’s registration constitutes bad faith under Policy ¶ 4(a)(iii).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 8, 2000) (finding bad faith where (1) the Respondent knew or should have known of the Complainant’s SONY marks and (2) Respondent registered multiple domain names which infringed upon the Complainant’s mark); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); 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).

Respondent’s use of Complainant’s NEIMAN MARCUS mark in the <neimanmacus.com> domain name to attract Internet users to its pornographic website, for commercial gain, represents bad faith use under Policy ¶ 4(b)(iv).  See 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); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: July 23, 2002

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