DECISION

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

Claim Number: FA0309000192316

PARTIES

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

REGISTRAR AND DISPUTED DOMAIN NAME

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

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 2, 2003; the Forum received a hard copy of the Complaint on September 2, 2003.

On September 2, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <neimanmarcushiring.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has 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 September 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 23, 2003 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@neimanmarcushiring.com by e-mail.

A timely Response was received on September 23, 2003. However, the Response did not comply with Rule 5(a) because it was received in hard copy form only.

The Panel, in its discretion, has considered the Response. See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that "[r]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process").

On September 26, 2003, Complainant submitted a timely and complete Additional Submission.

On October 9, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

            A.  Complainant makes the following assertions:

1. Respondent’s <neimanmarcushiring.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.

2. Respondent does not have any rights or legitimate interests in the <neimanmarcushiring.com> domain name.

3. Respondent registered and used the <neimanmarcushiring.com> domain name in bad faith.

B. Respondent

Respondent asserts that it was requested by Complainant to create an online demo of Respondent’s web-based applicant attraction and recruiting process. Respondent claims that it uses the company’s name and information in the domain name when creating these demos, per its standard procedure.  Respondent maintains that it has expended $2,000 to create its demonstration for Complainant.

C. Additional Submissions

Complainant contends that it has not authorized Respondent to perform any work for it and has not authorized Respondent to use Complainant’s marks in a domain name.

FINDINGS

Complainant’s principal retail chain, The Neiman Marcus Company (“Neiman Marcus”), was established in 1907 as a local specialty store and has become an internationally recognized innovator in fashion and merchandise.  Complainant developed a reputation for high prices and quality, which made the Neiman Marcus name synonymous with high fashion and world famous designers.  Complainant owns several United States trademark registrations for NEIMAN-MARCUS and NEIMAN MARCUS (the Neiman Marcus trademarks).  Complainant has been the substantially exclusive user of the Neiman Marcus trademarks in the United States since at least as early as 1907, and has been using the mark continuously ever since.

As a result of nearly a century of use, the Complainant has created in NEIMAN MARCUS one of the most famous and distinctive marks in retailing.  The Neiman Marcus trademarks have an invaluable good will and reputation, not only in the United States but also throughout the world. The Complainant operates thirty-five Neiman Marcus stores located in premier retail locations in major markets nation wide.  Hundreds of thousands of consumers hold Neiman Marcus charge accounts, as sales revenues for the Neiman Marcus stores and catalogs total in the hundreds of millions of dollars during the past year alone.

In the Fall of 1999, Complainant launched an e-commerce web site available at <neimanmarcus.com>.  Complainant also owns and operates the domain name <neimanmarcuscareers.com> which it uses in connection with its employment efforts, including hiring of associates. 

Complainant conducted an extensive search of Complainant’s business records and interviewed all personnel who might be aware of prior dealings between Complainant and Respondent.  Complainant did not discover any evidence of any prior dealings between Complainant and Respondent, nor any request by Complainant to Respondent regarding its goods or services.  Further, Complainant is unaware of any obligation Complainant has to pay Respondent for any goods or services.

On September 22, 2003, Complainant requested via electronic mail that Respondent disclose the name(s) of the employee with whom Respondent had dealt.  Respondent did not reply to this request.

Regardless of whether or not Respondent had any prior business dealings with Complainant, Complainant has not authorized Respondent to register or use a domain name that incorporates in whole or in part, Complainant’s NEIMAN MARCUS mark.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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 produced evidence of a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NEIMAN MARCUS mark, including Reg. No. 934,177 (registered on May 16, 1972) in relation to retail specialty department store services. Complainant’s trademark registrations with the USPTO establish Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The <neimanmarcushiring.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark because the disputed domain name incorporates Complainant’s mark and adds the generic or descriptive term “hiring” to the end of the mark. The addition of a generic or descriptive term does not significantly differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Accordingly, the Panel finds that the <neimanmarcushiring.com> domain name is confusingly similar to Complainant’s NIEMAN MARCUS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has submitted no evidence in support of its contention that it was requested by Complainant to create a website.  Nor has Respondent provided any evidence of authorization to use Complainant’s trademark in a domain name.  See Allen-Edmonds Shoe Corporation v. Takin’ Care of Bus., D2002-0799, (WIPO October 10, 2002) (even where a reseller is an authorized reseller, “without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name”); see also MatchMaker International Development Corporation v. Kaiser Development Corporation, FA 146933 (Nat. Arb. Forum May 9, 2003).

Respondent is not commonly known by NEIMAN MARCUS HIRING or <neimanmarcushiring.com>. Complainant has not licensed Respondent to use Complainant’s trademarks. The Panel concludes that Respondent has not established any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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 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).

Respondent has neither used nor made any demonstrable preparations to use the <neimanmarcushiring.com> domain name. The Panel may find that Respondent’s lack of proof of demonstrable preparations to use the disputed domain name before recieving notice of this dispute suggests that Respondent lacks any rights to or legitimate interests in the domain name with regard to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding that Respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan).

Respondent’s only use of the <neimanmarcushiring.com> domain name was to offer the domain name registration to Complainant for sale for $2,000. Respondent’s offer to sell the disputed domain name to Complainant indicates that Respondent has no rights to or legitimate interests in the domain name. See American Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum March 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <neimanmarcushiring.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent offered the <neimanmarcushiring.com> domain name registration to Complainant for $2,000.  Therefore, Respondent acquired the disputed domain name primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs, which is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where Respondent made no use of the domain names except to offer them to sale to Complainant).

The <neimanmarcushiring.com> domain name is obviously connected with Complainant because Complainant’s NEIMAN MARCUS mark is the primary element of the domain name. The registration of the disputed domain name by anyone other than Complainant suggests that the domain name was registered in bad faith. See Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); 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); see also Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO D2000-0277 (Athe domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith”).

The Panel thus finds that Respondent registered and used the <neimanmarcushiring.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <neimanmarcushiring.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated:  October 15, 2003

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