DECISION

The Neiman Marcus Group, Inc. v. Triple E Holdings Limited

Claim Number: FA0203000105896

PARTIES

Complainant is The Neiman Marcus Group, Inc., Dallas, TX (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  Respondent is Triple E Holdings Limited, Richfield, MN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <neimanmarcos.com>, registered with BulkRegister.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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 15, 2002; the Forum received a hard copy of the Complaint on March 18, 2002.

On March 17, 2002, BulkRegister.com confirmed by e-mail to the Forum that the domain name <neimanmarcos.com> is registered with BulkRegister.com and that Respondent is the current registrant of the name.  BulkRegister.com has verified that Respondent is bound by the BulkRegister.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 March 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 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@neimanmarcos.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 April 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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 disputed domain name <neimanmarcos.com> is confusingly similar to NEIMAN MARCUS and NEIMAN-MARCUS (collectively, the “NEIMAN MARCUS marks”), registered marks in which Complainant holds rights.

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

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

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant’s principal retail chain, the Neiman Marcus Company, was established in 1907 as a specialty store that has now become an internationally recognized innovator in fashion and merchandise.  Complainant has developed, through its NEIMAN MARCUS marks, a reputation for high prices and high quality in the retail fashion world.  Complainant operates thirty-one retail stores, and it reports that hundreds of thousands of consumers hold its NEIMAN MARCUS branded charge accounts.

Complainant owns several trademarks in NEIMAN-MARCUS and NEIMAN MARCUS, registered on the Principal Register of the United States Patent and Trademark Office as early as January 1955 (Reg. No. 601,375).  Complainant also operates a website at <neimanmarcus.com> to further its retail operations.

Respondent registered the disputed domain name on February 22, 2002, and has used the domain name to profit by redirecting Internet users to other commercial websites, including a site that facilitates the sale of domain names.

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 and NEIMAN-MARCUS marks through registration with the U.S. Patent and Trademark Office and continuous subsequent use.

The disputed domain name <neimanmarcos.com> is confusingly similar to the NEIMAN MARCUS mark as it reflects a slight misspelling of the mark.  Given the notoriety and distinctness of Complainant’s mark, the substitution of an “o” for a “u” does not change the overall impression of the mark.  See 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).

Further, the addition of “.com” to the mark is unimportant to the confusingly similar inquiry.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

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

Rights or Legitimate Interests

Complainant has established its rights to and interests in its marks.  Because Respondent has not submitted a Response in this matter, the Panel may presume it has no such rights or interests in respect of 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).

Respondent has used the disputed domain name in order to profit from visiting Internet users who intended to visit Complainant’s website.  Such is not a bona fide use pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to Respondent’s websites); see also America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

There is no evidence Respondent is commonly known by “neimanmarcos” or <neimanmarcos.com> pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as Triple E Holdings Limited.  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 Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, 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).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Given the notoriety and popularity of Complainant’s retail stores, Respondent was aware or should have been aware of Complainant’s rights in the NEIMAN MARCUS marks.  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).  By intentionally registering a domain name confusingly similar to Complainant’s marks, Respondent has demonstrated a bad faith opportunistic attempt to trade on Complainant’s goodwill.  Such behavior fulfills the bad faith requirement of the Policy.  See Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith).

Further, although the domain name reflects a misspelling of Complainant’s mark, the very practice of registering misspelled domain names (“typosquatting”) has been recognized as evidence of bad faith registration and use.  See e.g. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).

Finally, Respondent’s use of the confusingly similar domain name for profit, by creating a likelihood of confusion as to the source or sponsorship of its website, demonstrates 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 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).

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 <neimanmarcos.com> domain name be transferred from Respondent to Complainant.

Judge Harold Kalina (Ret.)

Dated:  April 25, 2002

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