DECISION

The Neiman Marcus Group, Inc. v. Lorna Kang

Claim Number: FA0204000109722

PARTIES

Complainant is The Neiman Marcus Group, Inc., Dallas, TX (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale, LLP.  Respondent is Lorna Kang, Perak, MALAYSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <neimenmarcus.com>, registered with Dotregistrar.com aka iHoldings.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 April 17, 2002; the Forum received a hard copy of the Complaint on April 22, 2002.

On April 17, 2002, Dotregistrar.com aka iHoldings.com confirmed by e-mail to the Forum that the domain name <neimenmarcus.com> is registered with Dotregistrar.com aka iHoldings.com and that Respondent is the current registrant of the name.  Dotregistrar.com aka iHoldings.com has verified that Respondent is bound by the Dotregistrar.com aka iHoldings.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 April 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 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@neimenmarcus.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 May 21, 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 <neimenmarcus.com> is confusingly similar to NEIMAN-MARCUS and NEIMAN MARCUS, 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 fashion and world famous designers.  Complainant operates thirty-one retail stores and 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 March 28, 2002, and has used the domain name to redirect Internet users to other unrelated commercial websites.  Complainant has provided evidence that Respondent has registered several other domain names incorporating the marks of other entities and misspellings of famous marks.

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 under Policy ¶ 4(a)(i) in the NEIMAN MARCUS mark through registration with the U.S. Patent and Trademark Office and continuous subsequent use.

The disputed domain name is confusingly similar to Complainant’s mark as it simply replaces the letter “a” in NEIMAN with an “e” and adds the generic top-level domain “.com” to the mark.  The resulting domain name is phonetically identical to Complainant’s mark and almost indistinguishable in appearance.

Given the fame of Complainant’s mark, the slight typographical error interjected by Respondent does not significantly alter the impression of the mark to defeat 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 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 misspelled mark is irrelevant to the “confusing similarity” 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).

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

Rights or Legitimate Interests

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

Respondent has been using the disputed domain name to redirect Internet users that inadvertently misspell Complainant’s mark when searching for Complainant’s website to an advertising website.  Such use, by infringing on Complainant’s mark, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor 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 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 FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).

There is no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as Lorna Kang.  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 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 and 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>).

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

Registration and Use in Bad Faith

Complainant has established that its NEIMAN MARCUS marks are well known throughout the world.  As such, Respondent is thought to have been aware of the marks and Complainant’s rights therein when it registered the disputed domain name.  See 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); see also 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).

By intentionally registering and using a domain name that is confusingly similar to Complainant’s marks, Respondent has demonstrated an opportunistic attempt to trade on Complainant’s goodwill and fame.  Such behavior demonstrates bad faith under Policy ¶ 4(b)(iv).  See 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 Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001) ("Given the uniqueness and the extreme international popularity of the [ODIE] mark, the Respondent knew or should have known that registering the domain name in question would infringe upon the Complainant's goodwill"); 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).

Further, Complainant has demonstrated that Respondent has engaged in a pattern of registering domain names that reflect famous marks and misspellings of famous marks.  This practice of “typosquatting” has been recognized as a bad faith use of a domain name under the Policy.  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).

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

Judge Harold Kalina (Ret.), Panelist

Dated:  May 29, 2002

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