Neimanmarcusoutlet.com

The timeline behind neimanmarcusoutlet.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION The Neiman Marcus Group, Inc. & NM Nevada Trust v. Netsolutions Proxy Services Claim Number: FA0505000482630 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 Netsolutions Proxy Services (“Respondent”), PO Box 9948, Tsuen Wan, Hong Kong 00000. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <neimanmarcusoutlet.com>, registered with Fabulous.com Pty Ltd. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. James A. Crary as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 24, 2005. On May 24, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the domain name <neimanmarcusoutlet.com> is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 May 26, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 15, 2005 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@neimanmarcusoutlet.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On June 22, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 assertions: 1. Respondent’s <neimanmarcusoutlet.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark. 2. Respondent does not have any rights or legitimate interests in the <neimanmarcusoutlet.com> domain name. 3. Respondent registered and used the <neimanmarcusoutlet.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, NM Nevada Trust owns and licenses to The Neiman Marcus Group, Inc., the NEIMAN MARCUS mark. These two entities will be collectively referred to as “Complainant.” Complainant was established in 1907 and has since become an internationally recognized innovator in fashion and merchandise. Complainant owns several trademark registrations with the United States Patent and Trademark Office for the NEIMAN MARCUS mark. (Reg. No. 601,375 issued April 6, 1954; Reg. No. 601,864 issued May 19, 1954; Reg. No. 601,723 issued February 1, 1955; and Reg. No. 1,733,202 issued September 5, 1943). Respondent registered the <neimanmarcusoutlet.com> domain name on Apr. 14, 2005. Respondent’s domain name resolves to a website featuring advertisements and links to products and services unrelated to Complainant’s business. 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). 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 with extrinsic proof in this proceeding that it has rights in the NEIMAN MARCUS mark through registration with the United States Patent and Trademark Office (“USPTO”) and by continuous use of the mark in commerce. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark); 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. The respondent has the burden of refuting this assumption). The <neimanmarcusoutlet.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark because the domain name incorporates Complainant’s mark in its entirety and merely adds the common word “outlet.” This change is not enough to overcome the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See 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); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark) . Furthermore, Respondent’s <neimanmarcusoutlet.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark because the domain name incorporates Complainant’s mark in its entirety and deviates with the addition of the generic top-level domain “.com.” The addition of a generic top-level domain does not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> was identical to the complainant's registered trademark GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> was plainly identical to the complainant’s MYSTIC LAKE trademark and service mark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Respondent is using the <neimanmarcusoutlet.com> domain name to redirect Internet users to a website featuring links and advertisements. Respondent’s use of a domain name that is confusingly similar to Complainant’s NEIMAN MARCUS mark to redirect Internet users interested in Complainant’s products to a website featuring links and advertisements unrelated to Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Moreover, Respondent has offered no evidence, and there is no proof in the record, indicating that Respondent is commonly known by the <neimanmarcusoutlet.com> domain name. Thus, Respondent has not established rights 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 interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith The Panel infers that Respondent receives click-through fees for diverting Internet users to commercial websites unrelated to Complainant’s business, via the disputed domain name. Since Respondent’s domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the <neimanmarcusoutlet.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). Furthermore, Respondent registered the <neimanmarcusoutlet.com> domain name with actual or constructive knowledge of Complainant’s rights in the NEIMAN MARCUS mark due to Complainant’s registration of the mark with the United States Patent and Trademark Office. Moreover, the Panel infers that Respondent registered the domain name with knowledge of Complainant’s rights in the mark due to Complainant’s aggressive promotion and long use of the mark in commerce. Registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s rights in the mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when the respondent reasonably should have been aware of the complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also 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) The Panel finds that Policy ¶ 4(a)(iii) has been 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 <neimanmarcusoutlet.com> domain name be TRANSFERRED from Respondent to Complainant. James A. Crary, Panelist Dated: July 6, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.