DECISION

NM Nevada Trust, The Neiman Marcus Group, Inc. and Bergdorf Goodman, Inc. v. David Bedwell

Claim Number: FA0202000104965

PARTIES

Complainants are NM Nevada Trust, The Neiman Marcus Group, Inc. and Bergdorf Goodman, Inc., Las Vegas, NV (collectively referred to hereinafter as “Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  Respondent is David Bedwell, Los Angeles, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bergdorfs.com>, registered with EasySpace, Ltd.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 20, 2002; the Forum received a hard copy of the Complaint on February 21, 2002.

On February 21, 2002, EasySpace, Ltd. confirmed by e-mail to the Forum that the domain name <bergdorfs.com> is registered with EasySpace, Ltd. and that Respondent is the current registrant of the name.  EasySpace, Ltd. has verified that Respondent is bound by the EasySpace, Ltd. 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 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 18, 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@bergdorfs.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 March 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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. Complainant owns a family of at least seven United States registrations containing BERGDORF and variations thereof, as well as the world-famous common law trademark BERGDORF.  Collectively, these marks are referred herein as the BERGDORF trademarks.

2. Complainant has been the substantially exclusive user of the BERGDORF trademarks in the United States since at least as early as 1901, and has been using the marks continuously ever since. 

3. Complainant’s trademark rights in BERGDORF were established long before Respondent registered the contested domain name. 

4. 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 the BERGDORF marks some of the most famous and prestigious marks in retailing. 

5. The BERGDORF trademarks have invaluable goodwill and reputation, not only in the United States 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.

6. Respondent’s domain name <bergdorfs.com> is virtually identical to Complainant’s family of BERGDORF marks.

7. Respondent is not known individually, or as a business, or in any other manner by “Bergdorfs” or <bergdorfs.com>.

8. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks and has not licensed or otherwise permitted Respondent to apply for or use any domain name incorporating any of those marks.

9. Respondent has not made any use of, or demonstrable preparations to use, the domain name.  Accordingly, Respondent cannot claim any legitimate noncommercial or fair use of the domain name. 

10. Respondent’s registration and “passive holding” of <bergdorfs.com> amounts to bad faith.

11. Respondent has shown further bad faith by supplying false information to the registrar when registering the domain name. 

12. Complainant sent a cease and desist letter sent to the Respondent using the contact name and address reported to the registrar.  The letter was returned with the comment “no such person” written across the front of the envelope.

B. Respondent

No Response was received.

FINDINGS

Complainant owns the following marks:

MARK	REG. NO.	GOODS DESCRIPTION
BERGDORF GOODMAN	Reg. No. 674,632 First Use:  1901 Filed:  04/19/1957	Ladies’ coats, suits, and dresses (Int’l class 25)
BERGDORF GOODMAN	Reg. No. 992,733 First Use: 1901 Filed: 08/20/1973	Retail specialty department store service (Int’l Class 042)
BERGDORF GOODMAN	Reg. No. 866,011 First Use: 1928 Filed: 04/18/1967	Billfolds, business and credit card cases, handbags, and wallets.  (Int’l Class 018); Watches.  (Int’l Class 014); Jewelry-namely, bracelets, pins, rings, earrings, necklaces.  (Int’l class 014); Antique furniture-namely, chairs, tables [and lamps].  (Int’l Class 020); Women’s Clothing-namely, brassieres, chemises, coats, dresses, furs, girdles, gloves, hats, jackets, nightgowns, peignoirs, petticoats, raincoats, robes, scarves, shoes, skirts, slacks, slippers, slips, stockings, sweaters; and men’s clothing-namely-coats, cummerbunds, jackets, pajamas, pants, robes, shirts, sweaters, swimming trunks, ties and vests.  (Int’l Class 018); Umbrellas.  (Int’l Class 018); Perfumes, cologne, bath oil, dusting powder, shaving soap, after-shave lotion, personal deodorants, and hairdressings.  (Int’l Class 003); Toilet soap.  (Int’l class 003)
BERGDORF GOODMAN	Reg. No. 845,203 First Use: 1928 Filed: 04.18/1967	Full Storage Service. (Int’l Class 039)
BERGDORF GOODMAN and design	Reg. No. 1,902,799 First Use: 1928 Filed: 01/10/1994	Full line of men’s and women’s apparel. (Int’l Class 025)
BERGDORF MEN	Reg. No. 2,110,801 First Use: 09/02/1996 Filed: 11/25/1996	Retail specialty department store services. (Int’l Class 035)
MISS BERGDORF	Reg. No. 863,351 First Use: 08/00/1955 Filed: 04/18/1967	Women’s clothing-namely coats, dresses, furs, hats, jackets, raincoats, shoes, shirts, skirts, slacks, and swimwear. (Int’l Class 018)

Respondent registered the disputed domain name on April 20, 2000 and has failed to resolve the domain name to a website. 

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

Respondent’s domain name incorporates the dominant section of Complainant’s BERGDORF marks.  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to Complainant’s ASPREY & GARRARD and MISS ASPREY marks).  Also, the addition of the letter “s” does not reduce the confusingly similar aspect of the domain name.  See Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark).

Respondent has misappropriated a sufficient textual component of the BERGDORF marks to cause confusion.  The fact that subject domain name <bergdorfs.com> is not identical to the Complainants’ family of trademarks is not of importance.  “[I]denticality is not necessary.  All that is necessary is that the domain name misappropriate sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark.”  Awesome Kids LLC v. Selavy Comm., D2001-0210 (WIPO Apr. 16, 2001). 

Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s family of marks and that Policy ¶ 4(a)(i) has been satisfied.   

Rights or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in the marks contained in their entirety in the disputed domain names that Respondent registered.  In addition, Complainant has shown that Respondent has no such rights.  Respondent’s passive holding of the <bergdorfs.com> domain name does not demonstrate a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

No evidence is found in this record, and Respondent has not come forward to establish such evidence, that Respondent is commonly known by the <bergdorfs.com> domain name, pursuant to Policy ¶ 4(c)(ii).  Additionally, Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not licensed or otherwise permitted Respondent to apply for or use any domain name incorporating any of those marks.  See Systima Ltd. v. Byrne, D2001-0300 (WIPO Apr. 23, 2001) (finding “[t]here is no indication from the evidence before this Administrative Panel that the Respondent has ever been known by the said domain name so as to claim rights or a legitimate interest in accordance with Paragraph 4(c)(ii) of the Policy”).

Furthermore, no evidence demonstrates that Respondent is making any legitimate, noncommercial or fair use of the <bergdorfs.com> domain name pursuant to Policy ¶ 4(c)(iii).  See Chanel, Inc. v. Heyward, D2000-1802 (Feb. 23, 2001) (finding no rights or legitimate interests where "Respondent registered the domain name and did nothing with it").

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

Registration and Use in Bad Faith

Respondent’s passive holding of the domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii).  See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there were no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).

Furthermore, Respondent has acted in bad faith by providing incorrect contact information to the registrar.  See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).

The Panel finds that Complainant has satisfied the burden under Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.

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

Sandra Franklin, Panelist

Dated:  March 27, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/461.html