DECISION

The Neiman Marcus Group, Inc, and NM Nevada Trust v. Chandrika Jain

Claim Number:  FA0407000302418

PARTIES

Complainant is The Neiman Marcus Group, Inc. and NM Nevada Trust (“Complainant”), represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660.  Respondent is Chandrika Jain (“Respondent”), 96 Mowat Ave., Toronto, Ontario M6K 3m1, CA.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net>, 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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 22, 2004; the Forum received a hard copy of the Complaint on July 26, 2004.

On July 23, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain names <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net> are registered with Tucows Inc. and that Respondent is the current registrant of the names. 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 August 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 2004 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@neimanmarcusjewelry.com and postmaster@neimanmarcusjewelry.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 September 1, 2004,  pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net> domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark.

2. Respondent does not have any rights or legitimate interests in the <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net> domain names.

3. Respondent registered and used the <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net> domain names in bad faith.

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

FINDINGS

Complainant The Neiman Marcus Group, Inc. was established in 1907 as a local specialty store and has become an internationally recognized innovator in fashion and merchandise.  Complainant has developed a reputation for high prices as well as high quality, which has made the “Neiman Marcus” name synonymous with high fashion and world famous designers. Complainant has used its NEIMAN MARCUS mark in connection with its own jewelry goods since at least as early as 1939. 

Complainant NM Nevada Trust owns several United States trademark registrations for the NEIMAN MARCUS mark (Reg. No. 601,864, issued May 19, 1954, Reg. No. 601,375, issued April 6, 1954, Reg. No. 601,723, issued February 1, 1955 and Reg. No. 1,733,202, issued October 25, 1991), which it licenses to The Neiman Marcus Company (collectively hereafter “Complainant”). 

Complainant has been the substantially exclusive user of the NEIMAN MARCUS marks in the United States since at least as early as 1907, and has been using the marks continuously ever since.  In the Fall of 1999, Complainant expanded its retailing strategy by launching an e-commerce website available at the <neimanmarcus.com> domain name.  This website combines the modern technology of online retailing with the enduring philosophy developed by Complainant over 90 years ago. 

Respondent registered the <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net> domain names on May 8, 2004.  Respondent is not using the disputed domain names in connection with an active website.

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 draw such inferences it 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 and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the NEIMAN MARCUS mark through registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last ninety-seven years.  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).

Respondent’s <neimanmarcusjewelry.net> and <neimanmarcusjewelry.com> domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark because the domain names incorporate Complainant’s mark and only deviate with the addition of the generic or descriptive word “jewelry.”  The mere addition of a generic or descriptive word does not negate the confusing similarity of Respondent’s domain names pursuant to 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 Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

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

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the domain names that contain Complainant’s mark.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain names.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shift to Respondent to show that it does have rights to or legitimate interests in the domain names pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that, once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Moreover, where Complainant makes a prima facie case and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Additionally, Respondent is wholly appropriating Complainant’s mark and is not using the <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net> domain names in

connection with an active website.  The Panel finds that Respondent’s pattern of registering two domain names confusingly similar to Complainant’s mark in connection with inactive websites does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain names pursuant to 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 Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name); 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”).

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net> domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names 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).

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

Registration and Use in Bad Faith

Respondent’s registration of the <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net> domain names prevent Complainant from reflecting its NEIMAN MARCUS mark in corresponding domain names, which is evidence of registration and use in bad faith under Policy ¶ 4(b)(ii).  See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).

While any of the four circumstances listed at Policy ¶ 4(b) establishes bad faith

registration and use of a domain name, the listed circumstances were not intended to be

exclusive.  The Panel may consider the totality of the circumstances in addressing whether Respondent registered and used the disputed domain names in bad faith.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Respondent’s registration of the disputed domain names that entirely incorporates Complainant’s well-known registered mark and deviates only with the addition of a generic or descriptive term, directly related to Complainant’s business suggests that Respondent knew of Complainant’s rights in the NEIMAN MARCUS mark at the time of Respondent’s registration.  Thus, the Panel finds that Respondent likely chose the <neimanmarcus jewelry.net> and <neimanmarcusjewelry.com> domain names based on the distinctive and well-known qualities of Complainant’s mark.  See 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 Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]hile an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion").

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

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <neimanmarcusjewelry.com> and <neimanmarcusjewelry.net> domain names be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  September 15, 2004

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