DECISION

The Neiman Marcus Group, Inc. v. John Zuccarini

Claim Number: FA0206000114709

PARTIES

Complainant is The Neiman Marcus Group, Inc., Dallas, TX (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  Respondent is John Zuccarini, Andalusia, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <niemenmarcus.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 25, 2002; the Forum received a hard copy of the Complaint on June 28, 2002.

On July 1, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <niemenmarcus.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 July 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 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@niemenmarcus.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 August 1, 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 <niemenmarcus.com> domain name is confusingly similar to Complainant's NEIMAN MARCUS mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1907, Complainant has used the NEIMAN MARCUS mark in commerce in relation to apparel and retail store services.  Complainant has registered several NEIMAN MARCUS marks with the United States Patent and Trademark Office.  Complainant has developed a reputation for high quality merchandise and high fashion.  Complainant has used its NEIMAN MARCUS mark for nearly a century and as a result its mark is one of the most famous in retailing.  The NEIMAN MARCUS mark is known throughout the world.  Complainant operates thirty-one stores in premier retail locations world-wide.  Complainant has a website at <neimanmarcus.com>.

Respondent is a well-known cybersquatter named John Zuccarini.  Respondent has registered thousands of misspellings of well-known marks, and has been the Respondent in countless UDRP domain name disputes.  Respondent registered the disputed domain name on December 12, 1999.  Respondent is using the <niemenmarcus.com> domain name to divert Internet users to <hanky-pank-college.com>, a pornographic website.  Respondent also subjects Internet users to numerous 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 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 that it has rights to the NEIMAN MARCUS mark through registration and continuous use.  Respondent’s <niemenmarcus.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark and merely replaces the “a” in “neiman” with an “e,” and transposes the vowels “ei” to “ie.” The misspelling of a well-known mark in a domain name does not create a distinct mark capable of overcoming a claim of confusing similarity.  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 Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response, and therefore it is presumed that Respondent has no rights or 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).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  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”).

Respondent is using a domain name that is a common misspelling of Complainant’s famous NEIMAN MARCUS mark in order to redirect Internet traffic interested in Complainant to Respondent’s pornographic website.  The use of a confusingly similar domain name to divert Internet users interested in Complainant to Respondent’s website is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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 Encyclopaedia Brittanica, 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).

Respondent has not come forward with any evidence to establish that it is commonly known as NEIMEN MARCUS or <niemenmarcus.com>.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i).  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).

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

Registration and Use in Bad Faith

Respondent is using a common misspelling of Complainant’s NEIMAN MARCUS mark in order divert Internet users to Respondent’s website for Respondent’s commercial gain.  The use of a domain name that is confusingly similar to Complainant’s famous mark for commercial gain is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also 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).

Furthermore, Respondent is using a confusingly similar domain name in order to divert Internet users to a website that features pornography and pop-up advertisements.  This type of use is considered to be bad faith pursuant to Policy ¶ 4(a)(iii).  See 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); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).

Based on the fact that Respondent registered a domain name that is a misspelling of Complainant’s famous mark it can be inferred that Respondent had actual knowledge of Complainant’s mark when it registered the disputed domain name.  Registration of <niemenmarcus.com> despite Respondent’s knowledge of Complainant’s rights in the NEIMAN MARCUS mark is evidence of bad faith registration 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 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).

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 shall be hereby granted.

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

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

Dated: August 7, 2002

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