DECISION

NM Nevada Trust, The Neiman Marcus Group, Inc. and Bergdorf Goodman, Inc. v. Sean Nassy

Claim Number: FA0202000104203

PARTIES

The Complainant is NM Nevada Trust, The Neiman Marcus Group, Inc. and Bergdorf Goodman, Inc., Chestnut Hill, MA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  The Respondent is Sean Nassy, Brooklyn, NY (“Respondent”), and is not represented by counsel.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bergdorfgoodmann.com>, registered with Register.com.

PANEL

The undersigned panelist, Richard DiSalle, 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 1, 2002; the Forum received a hard copy of the Complaint on February 4, 2002.

On February 4, 2002, Register.com confirmed by e-mail to the Forum that the domain name <bergdorfgoodmann.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.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 February 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 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@bergdorfgoodmann.com by e-mail.

A timely Response was received and determined to be complete on February 25, 2002.

On March 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard DiSalle as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that it owns at least seven United States registrations of the trademark BERGDORF GOODMAN and variations thereof (the BERGDORF GOODMAN trademarks).  The Complainant has been the substantially exclusive user of the BERGDORF GOODMAN trademarks in the United States since at least as early as 1901, and had been using the mark continuously ever since.  The Complainant’s trademark rights in BERGDORF GOODMAN were established long before the Respondent Sean Nassy illegally registered the contested domain name.

 

As a result of over a century of use, the operation of Complainant’s flagship Fifth Avenue store, and the worldwide distribution of mail order catalogs, Complainant has created in BERGDORF GOODMAN one of the most famous and prestigious marks in retailing.  The BERGDORF GOODMAN trademarks have an invaluable goodwill and reputation, not only in the United State but also throughout the world.  Hundreds of thousands of customers hold BERGDORF GOODMAN charge accounts and sales revenues for the BERGDORF GOODMAN stores and catalogs total in the hundreds of millions of dollars during the past decade alone.

 

Complainant also contends that it controls a high end specialty retailer operating the world famous Neiman Marcus and Bergdorf Goodman stores, and a direct marketing business, NM Direct.  The 31 Neiman Marcus stores are in premier retail locations in major markets nationwide, and the two Bergdorf Goodman stores, the main store and the Bergdorf Goodman Men store, are located in Manhattan at 58th Street and Fifth Avenue. In addition to identifying retail outlets, the BERGDORF GOODMAN trademarks are also used in connection with a highly successful direct-mail business, offering similar goods and services.

Complainant also says that Respondent’s domain name <bergdorfgoodmann.com> is identical, except for the additional “and” added to Complainant’s BERGDORF GOODMAN trademarks and that Respondent has misappropriated a sufficient textual component of the BERGDORF GOODMAN mark to cause confusion, and that, because the pronunciation, the connotation and commercial impression are identical, confusion is highly likely.

Complainant further contends that Respondent is not known individually, or as a business, or in any other manner by “Bergdorf Goodman” or <bergdorfgoodman.com> and that Respondent has not made any use of, or demonstrable preparations to use, the domain name.

Finally, Complainant contends that because the BERGDORF GOODMAN trademark is so obviously connected with Complainant, use of a confusingly similar domain name by someone with no connection with Complainant suggests bad faith.

B. Respondent

The Respondent contends that he applied to Register.com and followed the proper procedure in registering his name, all according to the rules, and that he has never made use of the name.  The Respondent also says that since he has not used the name yet, he has not shown bad faith and cannot be accused of intending to use it for commercial gain.

Respondent also complains that Complainant has not given him copies of the cases and decisions it has submitted, but cites no authority which would require Complainant to do so.

FINDINGS

(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;

(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.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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 trademark rights in the mark BERGDORF GOODMAN because it has registered it with the United States Patent and Trademark Office as early as 1901.  Complainant owns five trademark registrations for BERGDORF GOODMAN, Registration Numbers 674,632 and 992,733 issued in 1901 in relation to women’s coats, suits, dresses, and department store services.

Respondent’s domain name is identical to Complainant’s BERGDORF GOODMAN trademarks.  Respondent’s <bergdorfgoodmann.com> domain name incorporates the entirety of Complainant’s mark and merely adds an extra “n” and the top-level domain name  “.com”.  The addition of a top-level domain name such as “.com” is not relevant when considering whether or not the disputed domain name is identical or confusingly similar and, therefore, it does not create a distinct mark.  See Pomellato S.p.A  v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the “addition of .com is not a distinguishing difference”).  Furthermore, the addition of an extra “n” to the end of Complainant’s mark does not create a distinct mark capable of overcoming a claim of identical or confusing similarity.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).

Rights or Legitimate Interests

Respondent intends to attract Complainant’s customers to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.  The additional “n” on the end of “Goodman” is a common spelling error, and therefore, proof that Respondent is attempting to capitalize on Complainant’s goodwill.  The use of Complainant’s trademark to attract Internet users to Respondent’s website is not considered to be a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See 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 Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

Complainant asserts that Respondent is not commonly known as <bergdorfgoodmann.com>, and therefore has no rights or legitimate interests in the 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 interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

Respondent is not using the disputed domain name for a legitimate non-commercial or fair use because it intends to divert Complainant’s customers to its website by capitalizing on a common misspelling of Complainant’s mark.  It has been determined that fair use does not apply to misspellings of a well-known mark.  See 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).

Registration and Use in Bad Faith

Respondent registered the disputed domain with the intent to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  While Respondent claims he has not used the domain name, he states in his Response that:  “The reason why I applied for this name was to create a mock up web site to show them what I could do for their site.  My professional background gives me the expertise to be of great use to them.”  Respondent’s <bergdorfgoodmann.com> domain name is a common misspelling of Complainant’s well-known mark, and a mark in which Respondent has no rights.  Therefore, Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website).

Complainant also asserts that Respondent is engaging in “typosquatting,” and therefore registered the disputed domain name in bad faith.  In view of the Panel’s disposition of the case, this issue will not be addressed.

DECISION

Respondent’s request for a postponement until he receives from the Complainant copies of all cases cited in the Complaint is denied.  Respondent is ordered to transfer the domain name <bergdorfgoodmann.com> to the Complainant.

Richard DiSalle, Panelist
Dated:  March 13, 2002

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