DECISION

The Neiman Marcus Group, Inc. v. Oui!

Claim Number: FA0212000135599

PARTIES

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

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <neimannarcus.com>, registered with Tucows, Inc.

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 December 2, 2002; the Forum received a hard copy of the Complaint on December 2, 2002.

On December 3, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <neimannarcus.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. verified that Respondent is bound by the Tucows, Inc. 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 6, 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@neimannarcus.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 January 6, 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  <neimannarcus.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.

2. Complainant argues that Respondent has no rights to or legitimate interests in the <neimannarcus.com> domain name.

3. Complainant argues that Respondent registered and used the <neimannarcus.com> 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 has become 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.

The domain name registered by Respondent, <neimannarcus.com>, was registered March 22, 2002. According to Complainant’s independent research and investigation, Respondent is a notorious typosquatter that regularly registers domain names that are similar to many other famous marks. Currently, Respondent owns approximately 1,682 domain names, most of which are misspellings of famous marks. For example, Respondent holds rights in the domain names: <1800glowers.com>, <americanespress.com>, <alotvista.com>, <eddievauer.com>, and <schwav.com>. Respondent’s <neimannarcus.com> domain name redirects Internet users to a commercial website located at <superinternetdeals.com>.

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

Respondent is engaging in typosquatting, the intentional registration of a domain name that is a misspelling of a distinctive or famous mark, causing an Internet user who makes a slight spelling or typing error to reach an unintended website. The changing of the letter “m” to “n” from MARCUS to NARCUS does not significantly alter the mark so as to distinguish it from Complainant’s famous mark. Therefore, Respondent’s  <neimannarcus.com> domain name is confusingly similar to the NEIMAN MARCUS mark under a Policy ¶ 4(a)(i) confusingly similar analysis. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)  (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark); 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 Complainant’s STATE FARM mark).

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 as true all reasonable inferences alleged by Complainant. Moreover, by failing to reply, Respondent failed to fulfill its 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 Complainant’s allegations.  Complainant presented evidence that substantiates its claim that Respondent has no rights or legitimate interests in the contested <neimannarcus.com> domain name.

The domain name registered by Respondent, <neimannarcus.com>, has been used by Respondent to link to the commercial website <superinternetdeals.com>. Respondent’s use of the domain name shows that it is intentionally using the fame of Complainant’s mark to attract Internet traffic to another website, which is not associated with Complainant. Respondent’s behavior in relation to the domain name has not exhibited a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); 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).

No evidence submitted indicates that Respondent has any affiliation with Complainant and nothing suggests that Respondent is known by the <neimannarcus.com> domain 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 as true Complainant’s allegation 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).

Respondent used the domain name <neimannarcus.com> to divert Internet users to a commercial website. Since Respondent intentionally engaged in the misspelling of a famous mark to attract Internet consumers, it is therefore deemed an unfair or non-commercial use of the disputed domain name. When one misleadingly diverts consumers to a commercial website, or intentionally attracts Internet users through a misspelling of a famous mark, it is considered to to be an unfair or illegitimate use of the domain name under Policy ¶ 4(c)(iii). 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); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

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

Registration and Use in Bad Faith

Given the international identification of Complainant with the NEIMAN MARCUS mark, the Panel is permitted to infer that Respondent was aware of the mark and had actual notice of Complainant’s rights in the mark. Since Complainant’s mark is so widely held as distinct and exclusive to Complainant, Respondent’s registration of the disputed domain name thereafter, 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, by linking <neimannarcus.com> to commercial websites, used the domain name in bad faith. Respondent is intentionally trying to attract Internet consumers to its websites for commercial gain by deliberately causing confusion between Respondent’s domain name and Complainant’s mark. This behavior is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

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 <neimannarcus.com> be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: January 15, 2003.

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