DECISION

The Neiman Marcus Group, Inc. v. Neiman-Marcus

Claim Number: FA0212000135048

PARTIES

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

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <neiman-marcus.net>, registered with Melbourne IT, ltd. d/b/a Internet Names Worldwide.

PANEL

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 30, 2002; the Forum received a hard copy of the Complaint December 2, 2002.

On December 4, 2002, Melbourne IT, ltd., d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <neiman-marcus.net> is registered with Melbourne IT, ltd., d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne IT, ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne IT, ltd. d/b/a Internet Names Worldwide’s 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 December 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 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@neiman-marcus.net 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 January 3, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following allegations:

1. Complainant argues that Respondent’s  <neiman-marcus.net> domain name is identical to Complainant’s NEIMAN MARCUS mark.

2. Complainant urges that Respondent has no rights to or legitimate interests in the <neiman-marcus.net> domain name.

3. Complainant argues that Respondent registered and used the <neiman-marcus.net> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant’s principal retail chain, The Neiman Marcus Company, was established in 1907 as a local specialty store. Complainant thereafter became an internationally recognized innovator in fashion and merchandising and currently runs 31 retail stores located in premier markets nationwide. Complainant developed a reputation for high quality, which has made the NEIMAN MARCUS name and mark synonymous with high fashion and world famous designers. Complainant expanded its services to include worldwide catalog sales and online ordering and purchasing at <neimanmarcus.com>.

Complainant is the owner of numerous trademarks for NEIMAN MARCUS and other variations of said mark, registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 601,375 and 601,864). Since Complainant’s inception in 1907, it has continuously used the mark and has not given permission to Respondent to use the mark in any manner.

Respondent registered <neiman-marcus.net> on September 10, 2002. Since registration, the domain name has been inactive.

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 Complainant's undisputed representations, pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the NEIMAN MARCUS mark through registration with the USTPO and by subsequent continuous use of the mark.

The domain name registered by Respondent, <neiman-marcus.net>, is identical to Complainant’s famous NEIMAN MARCUS mark. Moreover, the hyphen used in the disputed domain name does not substantially affect the mark and does not create a distinct mark. Therefore, the domain name is considered identical under Policy ¶ 4(a)(i). See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen").

Further, the addition of a top-level domain, such as “.com” or “.net”, does not change the mark as to make the domain name distinctive. See Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000), ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com"); see also 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).

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

Rights or Legitimate Interests

Respondent did not respond to the Complaint, thereby allowing the Panel to accept all reasonable inferences alleged by Complainant as true. Moreover, by failing to reply, Respondent failed to meet the burden of demonstrating rights or legitimate interests in the disputed domain name.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest Complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).  No evidence contradicts the allegations of Complainant, which has presented evidence that substantiates its claim that Respondent has no rights or legitimate interests in the contested domain name.

Respondent has made no use of the disputed domain name. Simply registering the domain name is not sufficient to establish rights and legitimate interests.When Respondent makes no use of a disputed domain name, it can neither be said as being used for a bona fide use under Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name).

No evidence submitted indicates that Respondent has a substantial affiliation with, or is known by the <neiman-marcus.net> name. Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark. Since Respondent has not come forward with a viable alternative supporting its use of Complainant’s mark and does not have authorization or consent to use the mark, the Panel may accept the proposition proposed by Complainant that Respondent has no rights or legitimate interests to the domain name under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

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

                       

Registration and Use in Bad Faith

Respondent registered and is using the disputed domain name in bad faith. Complainant’s NEIMAN MARCUS mark is registered with the USTPO, thereby placing Respondent on constructive notice. Moreover, the international identification that the NEIMAN MARCUS mark enjoys permits the finding that Respondent was aware of Complainant’s rights in the mark and therefore had actual notice of Complainant’s rights prior to registering the domain name at issue. Respondent’s registration of the disputed domain name containing Complainant’s mark, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration. 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 worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

Respondent can also be said to be engaging in opportunistic bad faith. Respondent’s <neiman-marcus.net> domain name is identical to Complainant’s well known and famous mark. When Respondent registers a mark that is identical in nature to a mark that is recognized worldwide yet fails to allege any good faith basis for the use of the disputed domain name, the Panel can infer that Respondent did so in bad faith. See Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“the selection of a domain name [northwest-airlines.com] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains Complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name).

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

DECISION

Having established all three elements required under the ICANN Policy, the Panel hereby concludes that the requested relief shall be GRANTED.  Accordingly, it is ordered that the domain name <neiman-marcus.net> be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: January 13, 2003.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/36.html