DECISION

The Neiman Marcus Group, Inc. v. Music Wave

Claim Number: FA0211000135020

PARTIES

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

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <nemenmarcus.com>, registered with Computer Services Langenbach GmbH d/b/a Joker.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.

 James P. Buchele, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 27, 2002; the Forum received a hard copy of the Complaint on November 27, 2002.

On December 2, 2002, Computer Services Langenbach GmbH d/b/a Joker.com confirmed by e-mail to the Forum that the domain name <nemenmarcus.com> is registered with Computer Services Langenbach GmbH d/b/a Joker.com and that Respondent is the current registrant of the name.  Computer Services Langenbach GmbH d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach GmbH d/b/a Joker.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 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@nemenmarcus.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 3, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele 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 argues that Respondent’s  <nemenmarcus.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.

2. Complainant argues that Respondent does not have rights or legitimate interests in the <nemenmarcus.com> domain name.

3. Complainant argues that Respondent registered and used the <nemenmarcus.com> domain name in bad faith.

B. Respondent

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 merchandise and currently runs 31 retail stores located in premier markets nationwide. Complainant has developed a reputation for high quality products, which has made the NEIMAN MARK name and mark synonymous with high fashion and world famous designers. Complainant has 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 with 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 the disputed domain name on January 25, 2002. Respondent’s only use of the domain name is to misdirect Internet consumers to pornographic websites. Internet consumers intending to reach Complainant actually end up at <hanky-panky-college.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 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 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 and/or Confusingly Similar

Complainant has established rights in the NEIMAN MARCUS marks through registration with the USTPO and subsequent continuous use.

Respondent is engaged in typosquatting. Typosquatting is 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 mere removal of the letter “i” from NEIMAN MARCUS, and switching “man” to “men,” does not significantly alter the mark as to distinguish it from Complainant’s famous mark. Respondent’s  <nemenmarcus.com> domain name is clearly confusingly similar to NEIMAN MARCUS.  Therefore, the deletion of the letter and pluralizing “man” does not create a distinct mark capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis. See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore 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. Moreover, by Respondent failing to reply, it 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).  There is no evidence that contradicts the allegations of Complainant.  Complainant has presented evidence that substantiates its claim that Respondent has no legitimate rights or interests in the contested domain name.

Respondent’s <nemenmarcus.com> domain name is used as a link to pornographic websites. Respondent’s use of the domain name shows that it is intentionally using the fame of Complainant’s mark to attract Internet traffic to other websites, which are not associated with Complainant. Respondent’s behavior regarding 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).

There has been no evidence submitted to indicate that Respondent has a substantial affiliation with, or is known by the <nemenmarcus.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 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).

Respondent uses  the <nemenmarcus.com> domain name to divert Internet users to pornographic websites. When one misleadingly diverts consumers to a pornographic website, it is not a fair or legitimate use of the domain name under Policy ¶ 4(c)(iii).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark).

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

Registration and Use in Bad Faith

Given the worldwide identification of the NEIMAN MARCUS mark, it can be inferred that Respondent was aware of the mark, and therefore had actual notice of Complainant’s rights. Since Complainant’s mark is so widely held as distinctive 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 means of linking  <nemenmarcus.com> to pornographic 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to Complainant’s mark and used a confusingly similar pornographic depiction of Complainant’s registered trademark on its website to cause confusion as to the source or affiliation of the site)

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

 James P. Buchele, Panelist

Dated: January 16, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/55.html