WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NM Nevada Trust v. neimanmarcuslastcallsale.com

Case No. D2014-1502

1. The Parties

The Complainant is NM Nevada Trust of Dallas, Texas, United States of America (“United States”), represented by Bryan Cave, LLP, United States.

The Respondent is neimanmarcuslastcallsale.com of Budapest, Hungary.

2. The Domain Name and Registrar

The disputed Domain Name <neimanmarcuslastcallsale.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2014. On September 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On September 3, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2014.

The Center appointed Ian Blackshaw as the sole panelist in this matter on October 9, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant owns and licenses to its related companies, including The Neiman Marcus Group, Inc., the world-famous NEIMAN MARCUS trademark and trade name, which has been used for over 100 years to identify its highly successful luxury retail department store business as well as a wide variety of branded apparel, accessory, food, and other products.

The Complainant also owns and licenses to its related companies the famous LAST CALL trademark, which has been used for thirty-five (35) years to identify its highly successful retail department store clearance centers.

The Complainant’s retail department store business was established in 1907, and the Complainant now operates forty-one (41) NEIMAN MARCUS luxury retail department store locations and thirty-six (36) LAST CALL retail department store locations throughout the United States, and reaches hundreds of thousands of additional customers both in the United States and in countries throughout the world via its NEIMAN MARCUS mail order catalogs and its e-commerce websites, accessible at <neimanmarcus.com> and <lastcall.com>. NEIMAN MARCUS is one of the most successful and prestigious specialty retailers in the United States and around the world.

The Complainant’s retail stores, including its seventy-six (76) NEIMAN MARCUS and LAST CALL retail stores, occupy more than 6.5 million square feet of retail space throughout the United States, evidence of which has been provided to the Panel.

The NEIMAN MARCUS retail services (including services under the NEIMAN MARCUS brand and the NEIMAN MARCUS sub-brands and related brands BERGDORF GOODMAN, LAST CALL and HORCHOW) generated more than USD 4.6 billion in sales in the fiscal year 2013 alone, and more than USD 20 billion over the past five years. Again, evidence of this has been provided to the Panel.

Furthermore, the Complainant has expended, and continues to expend, a substantial amount of resources, money, time and effort promoting, marketing, advertising and building consumer recognition and goodwill in its extremely valuable NEIMAN MARCUS and LAST CALL marks. Advertising expenditures related to the NEIMAN MARCUS and LAST CALL brands totaled approximately USD 200 million in the Complainant’s fiscal years 2012 and 2013.

For over a century, the Complainant and its predecessors in interest have used the Neiman Marcus trade name and the NEIMAN MARCUS trademarks and service marks for its luxury retail department store services, mail order catalogs, e-commerce websites and private label merchandise, and for three and a half decades, the Complainant and its predecessors in interest have used the LAST CALL service marks for its retail department store services and clearance centers and e-commerce website services.

As a result of this long and extensive use and advertising, the Complainant and its NEIMAN MARCUS and LAST CALL marks have acquired extremely valuable goodwill and reputation among consumers and professionals in the fashion and retail community.

Since at least as early as 1907, the Complainant (and its predecessors) has continuously used the NEIMAN MARCUS mark in connection with retail services, clothing, and a host of related goods and services, including handbags, shoes, belts and other fashion accessories.

The Complainant holds numerous registrations for variations of the trademark NEIMAN MARCUS in the European Union, the United States and around the world (collectively, the “NEIMAN MARCUS Marks”).

By way of example only, the Complainant owns all right, title and interest in, to and under the following relevant Community trademark and United States trademark registrations and corresponding common law marks (including, but not limited to, all goodwill associated therewith):

1. NEIMAN MARCUS (Community Trademark Registration No. 000176560, filed in 1996 and registered on November 25, 1998) for a broad range of goods, including “Articles of clothing for men, women and children; leisure and sportswear; footwear and headgear,” in International Class No. 25; “Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry; bracelets, pins, rings, earrings, necklaces, brooches, cufflinks, tie-pins and tie-clips; precious stones; watches, clocks and other horological and chronometric instruments,” in International Class No. 14; “Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; wallets and cases; umbrellas, parasols and walking sticks,” in International Class No. 18; and additional goods in International Class Nos. 3, 21, 28, 29, and 30;

2. NEIMAN MARCUS (United States Registration No. 934,177) for “retail specialty department stores,” in International Class No. 42;

3. NEIMAN MARCUS and Design (United States. Registration No. 1,733,202) for “men’s women’s and children’s clothing,” in International Class 025, and “retail store services and mail order catalog services in the field of general merchandise,” in International Class No. 042;

4. NEIMAN-MARCUS (United States Registration No. 1,154,006) for “men’s, women’s, and children’s clothing,” in International Class No. 025;

5. NEIMAN-MARCUS and Design (United States Registration No. 601,375) for “women’s and misses’ wearing apparel-namely, coats, raincoats, suits, dresses, evening gowns, outer skirts, jackets, blouses, sweaters, outer shirts, vests, guimpes, scarves, shawls, neckties, gloves of leather, and of fabric and of combinations thereof; lounging, bath, and beach robes; bathing suits; negligees; kimonos; underwear; underskirts; petticoats; slips; pajamas and nightgowns; corsets, brassieres, and combination corset garments; garter belts; hosiery; boots, shoes, and slippers; hats, caps, and bonnets; fur garments-namely, coats, jackets, capes, wraps, stoles, neckpieces, scarves, collars, and muffs,” in International Class No. 25;

6. NEIMAN-MARCUS and Design (United States Registration No. 601,723) for “men’s clothing namely, overcoats, suits, jackets, sport coats, trousers, slacks, outer shirts, sport shirts, sweaters, underwear, pajamas, lounging robes, bath robes, beach robes, beach shirts, swimming trunks, hosiery, garment belts, neckties, and hats,” in International Class No. 25;

7. NEIMAN MARCUS (United States Registration No. 1,593,195) for “fruit preserves; jams; jellies; prepared chili, without beans; mayonnaise; pickles; roasted nuts; and processed olives and processed jalapenos,” in International Class No. 29, and “barbecue sauce; pralines; candy; catsup; chili sauce; mesquite seasoning; popped popcorn; mustard; pretzels; relish; salsa; salsa verde; spaghetti sauce; and steak sauce,” in International Class No. 30; and

8. NEIMAN MARCUS (United States Registration No. 2,209,260) for “credit card services,” in International Class No. 36.

Again, evidence of all this has been provided to the Panel.

A listing of seventeen additional NEIMAN MARCUS non-United States. trademark registrations owned by the Complainant (or one of the Complainant’s related companies) has also been provided to the Panel.

Furthermore, since at least as early as 1979, the Complainant (and its predecessors) has continuously used the LAST CALL mark in connection with retail services and related goods and services.

The Complainant holds numerous registrations for variations of the trademark LAST CALL in the United States and around the world (collectively, the “LAST CALL Marks”). By way of example only, the Complainant owns all right, title and interest in, to and under the following relevant United States trademark registrations and corresponding common law marks (including, but not limited to, all goodwill associated therewith):

1. LAST CALL (United States Registration No. 1,774,545, filed in 1992 and registered on June 1, 1993) for “retail department store services,” in International Class No. 25;

2. NEIMAN MARCUS LAST CALL (United States Registration No. 4,440,392, filed in 2013 and registered on November 26, 2013) for “retail department store services,” in International Class No. 25; and

3. LAST CALL STUDIO BY NEIMAN MARCUS (United States Registration No. 4,084,074, filed in 2011 and registered on January 10, 2012) for “retail department store services,” in International Class No. 25.

Again, evidence of all this has been provided to the Panel.

Since at least as early as 1995, the Complainant has maintained an active presence on the Internet, including through its websites at <neimanmarcus.com> and <lastcall.com>, where it promotes its retail services, clothing, and related products in connection with the NEIMAN MARCUS Marks and the LAST CALL Marks, and provides e-commerce services, offering for sale a variety of apparel, shoe, fashion accessory, jewelry and other items. Again, evidence has of this has been provided to the Panel.

The Complainant’s online retail store operations themselves generated between USD 750 million and USD 1.0 billion in each of the Complainant’s fiscal years 2011, 2012 and 2013.

The Complainant and its associated entities also own numerous relevant domain names, including but not limited to the following:

<neimanmarcuslastcall.com>

<neimanmarcuslastcall.net>

<neimanmarcuslastcall.org>

<neimanmarcuslastcallclearancecenter.com>

<neimanmarcuslastcallclearancecenter.net>

<neimanmarcuslastcallclearancecenter.org>

<neimanmarcuslastcalloutlet.com>

<neimanmarcuslastcallstudio.com>

<lastcallbyneimanmarcus.com>

<lastcallneimanmarcus.com>

<neimanmarcusstores.com>

<neimanmarcusstore.com>

<neimanmarcusstores.net>

<neimanmarcusstores.org>

<neimanmarcusfashion.com>

<neimanmarcusoutlet.com>

<neimanmarcusoutlets.com>

A listing of well over 100 domain names owned by the Complainant (or one of the Complainant’s related companies) and incorporating or referencing the NEIMAN MARCUS Marks and/or the LAST CALL Marks has been provided to the Panel.

The Complainant, its predecessors, and associated entities have expended, and continue to expend, a substantial amount of resources, money, time and effort promoting, marketing, advertising, and building consumer recognition and goodwill in the extremely valuable and famous NEIMAN MARCUS and LAST CALL branded goods and services under and in connection with its highly recognized and famous NEIMAN MARCUS Marks and LAST CALL Marks.

There can be no dispute, it is contended by the Complainant, that the NEIMAN MARCUS Marks and the LAST CALL Marks are extremely valuable and famous throughout the world and that Complainant owns numerous United States and foreign registrations for marks incorporating the name NEIMAN MARCUS and/or LAST CALL as well as domain names incorporating the same.

In view of the information above, the Complainant has established strong rights in its NEIMAN MARCUS Marks and is entitled to broad protection. Moreover, previous UDRP panels have found that the Complainant has sufficient rights in the NEIMAN MARCUS Marks and LAST CALL Marks to support a transfer of confusingly similar domain name registrations to the Complainant. See, e.g., NM Nevada Trust v. Jian Pousi, WIPO Case No. D2011-1842.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

(i) The disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The disputed Domain Name wholly incorporates and is thus confusingly similar to Complainant’s NEIMAN MARCUS Marks and Complainant’s LAST CALL Marks. See, e.g., OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp.2d 176, 187 (W.D.N.Y. 2000) (“intentional copying of the trademark gives rise to a presumption of a likelihood of confusion”); and Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”). Indeed, the Complainant owns a United States trademark registration for the combination of these marks, namely, United States Registration No. 4,440,392 for NEIMAN MARCUS LAST CALL. Evidence of which has been provided to the Panel.

The disputed Domain Name is comprised of the Complainant’s NEIMAN MARCUS mark, combined with the Complainant’s LAST CALL mark, and the addition of the generic word “sale.” The disputed Domain Name is identical to Complainant’s marks, except that the disputed Domain Name deletes the space between “neiman” and “marcus”, and between “last” and “call”, adds the generic word “sale,” and adds the generic Top-Level Domain (“gTLD”) “.com.” These differences are legally insignificant and not sufficient to avoid a likelihood of confusion under the Policy. “When a domain name differs from a trademark only by removing a space between words and appending a TLD designation, the domain name is confusingly similar to the mark.” Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571. The addition of the suffix “.com” is, of course, irrelevant as it is functional to domain names and does not serve to distinguish source. See e.g., Anti Flirt S.A. and Mr. Jaques Amsellem v. WCVC, WIPO Case No. D2000-1553; Donvand Limited trading as Gullivers Travel Associates v. Omniscience, WIPO Case No. D2002-0746 (holding that disputed domain name was identical to the trademark owned by the complainant when the only difference between the domain name and the trademark was the addition of the suffix “.com”).

Further, confusing similarity has been found where a respondent has added the generic word “sale” to a complainant’s trademark in a disputed domain name. “[T]he suffix ‘-sale’ does nothing to distinguish the Domain Name from the Complainant’s trademark.” Saks & Co. v.saksfifthavenue-sale.com, WIPO Case No. D2013-1644. In that case, the panel held that adding the word “sale” to the complainant’s mark “merely adds to the potential for confusion as it is descriptive of one of the principal activities for which the Complainant’s mark is registered.” That conclusion is doubly true here, where Complainant’s LAST CALL Marks are used in connection with its retail clearance centers, and the term “sale” further emphasizes the connection between the LAST CALL Marks and the Complainant.

The disputed Domain Name <neimanmarcuslastcallsale.com> is, therefore, confusingly similar to Complainant’s valuable and well-known NEIMAN MARCUS Marks and LAST CALL Marks.

Furthermore, unlike consumers in a traditional retail context, who must actually travel to a physical location to purchase goods and services, Internet consumers are more likely to be misled into visiting virtual locations by the use of confusing similarities in trademarks. The Respondent seeks to exploit consumer confusion and Complainant’s fame and goodwill by fully incorporating the Complainant’s NEIMAN MARCUS and LAST CALL marks in the disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed Domain Name

The Respondent has no legitimate rights or interests whatsoever in the disputed Domain Name and the Complainant makes the following assertions.

The Respondent intentionally and wrongfully chose to register a domain name identical or confusingly similar to the Complainant’s NEIMAN MARCUS Marks and LAST CALL Marks for the purpose of trading upon the Complainant’s reputation and goodwill. The Respondent registered the disputed Domain Name intending and knowing that its actions would deceive, mislead and divert a large number of consumers seeking Complainant’s goods and services. The Respondent’s intent alone precludes a finding of a bona fide offering of goods and/or services or a legitimate noncommercial or fair use.

The Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s valuable, famous and distinctive NEIMAN MARCUS Marks and/or LAST CALL Marks in any way or manner.

Additionally, on information and belief, the Respondent has not and cannot demonstrate that it-apart from its illegal registration and use of the disputed Domain Name-has ever made any legitimate offering of goods or services under the Complainant’s NEIMAN MARCUS Marks and/or LAST CALL Marks.

The Respondent does not purport to offer for sale any products (authentic or otherwise) branded with the Complainant’s NEIMAN MARCUS Marks or LAST CALL Marks. The Respondent simply utilizes a domain name that wholly incorporates the Complainant’s marks, with the clear intent to confuse Internet users and improperly divert traffic and commercial sales to its own competing wholly commercial retail website, and away from the Complainant. The Respondent is clearly trading on the fame and notoriety of the Complainant’s NEIMAN MARCUS Marks and LAST CALL Marks. Use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. See Kira Reed Lorsch v. Kirareed.net, WIPO Case No. D2010-0851; Madonna Ciccone, p/k/a Madonna v. Dan Parisi, WIPO Case No. D2000-0847 (“use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services”).

The Respondent has no means to establish that it is or ever has been commonly known as “Neiman Marcus” and/or “Last Call.” On information and belief, the Respondent has not sought or procured any registrations for any trade names, corporations, or trademarks with any governmental or business authority for “Neiman Marcus Last Call” or “NeimanMarcusLastCallSale.com.”

Moreover, the Complainant owns the Community Trademark Registration No. 000176560 for the mark NEIMAN MARCUS. Therefore, any use by the Respondent of the NEIMAN MARCUS Marks in the Respondent’s purported resident country of Hungary is infringing, and does not constitute a right or legitimate interest under the Policy.

The Respondent does not appear to have any legitimate trademark, service mark or other intellectual property rights in or to any of the NEIMAN MARCUS Marks, the LAST CALL Marks, or any similar marks.

Finally, the Respondent is not making any legitimate noncommercial use of the disputed Domain Name.

As set forth above, the Respondent adopted and continues to use a domain name that wholly incorporates the Complainant’s NEIMAN MARCUS Marks and LAST CALL Marks, solely for the illegal and improper commercial purposes of: (i) illegally trading upon the Complainant’s goodwill to confuse, mislead, deceive, and divert consumers; (ii) misdirecting the Complainant’s customers to its own wholly commercial retail website that directly competes with the Complainant’s services; and (iii) intentionally tarnishing and diluting the Complainant’s valuable and well-known marks.

(iii) The disputed Domain Name was registered and is being used in bad faith

The Complainant asserts that the Respondent registered and is using the disputed Domain Name in bad faith, in direct violation of, at least, the paragraphs 4(b)(iii) and (iv) of the Policy.

The Respondent’s bad faith conduct is evidenced as follows:

First, the Respondent is intentionally attempting to divert, for commercial gain, Internet users to the Respondent’s wholly commercial retail website, through which it provides directly competing retail services for commercial gain. As detailed above, the Respondent’s website is clearly designed to have an identical look and feel of the Complainant’s authentic website. Where a respondent is found to be diverting users to its website to generate traffic and sales commissions for its own commercial benefit, such conduct is uniformly recognized by previous UDRP UDRP panels as constituting bad faith under the Policy. See, e.g., Microsoft Corporation v. Zerbo, WIPO Case No. D2005-0644; Dr. Ing. h.c. F. Porsche AG v. Terkin, WIPO Case No. D2003-0888 and NET2PHONE INC (Complainant) –v- DYNASTY SYSTEM SDN BHD,WIPO Case No. D2000-0679.

Second, on information and belief, the Respondent uses the Complainant’s world-famous retail department store brands in the disputed Domain Name and website to either (i) sell counterfeit reproductions of third party luxury products; or (ii) to collect sensitive personal and financial information from consumers who have been diverted to the Respondent’s website. Either scenario constitutes bad faith under the Policy. See Mattel, Inc. v. Magic 8 Ball Factory, WIPO Case No. D2013-0058 (“Respondent’s activities constitute bad faith under paragraph 4(b)(iv) of the Policy as it is using The Domain Name intentionally to compete with Complainant and to attract for commercial gain Internet users to Respondent’s website where counterfeit goods are offered, by creating a likelihood of confusion with The Trade Mark”); Advance Magazine Pubs. Inc. v. HostMonster.com Inc., WIPO Case No. D2010-1355 (“[U]se of a well-known trademark to lure customers to a website that promotes counterfeit or fake goods would in most circumstances be considered bad faith use”); see also The Royal Bank of Scotland Group Plc v.Lauren Terrado, WIPO Case No. D2012-2093 (operation of a “phishing” website, for the purpose of obtaining information from Internet users believing themselves to be dealing with Complainant, “is perhaps the clearest evidence of registration and use of a domain name in bad faith.”).

Third, the Respondent’s bad faith conduct is designed to disrupt and harm the Complainant’s business. The Respondent utilizes the disputed Domain Name to divert potential users away from the Complainant and its authentic goods and services and toward the Respondent’s directly competing retail services. The Respondent’s conduct plainly has caused and will continue to cause the Complainant commercial detriment, in terms of consumer confusion, lost sales and goodwill, and the loss of the general ability to communicate and transact with its existing and potential customers.

Fourth, upon information and belief, the Respondent has absolutely no legitimate trademark, service mark or other intellectual property rights in or to the disputed Domain Name, or any similar marks or names. The Respondent’s complete lack of intellectual property rights in the disputed Domain Name further demonstrates bad faith in adopting and using the disputed Domain Name. Where a domain name is so obviously connected to a particular product or service and the registrant is found to have “no connection” to that product or service, previous UDRP panels have found a registrant guilty of “opportunistic bad faith.” See e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. Such is thesituation in this case.

Fifth, the Respondent plainly knew of the Complainant’s long and continuous use of its NEIMANMARCUS Marks and LAST CALL Marks at the time of registration and that it had no right, title or interest, whatsoever, in these marks or the disputed Domain Name. The Respondent, upon information and belief, registered the disputed Domain Name more than 100 years after Complainant and its predecessors began using the NEIMAN MARCUS Marks in 1907; more than 35 years after the Complainant and its predecessors began using the LAST CALL Marks in 1979; and also well after the Complainant became one of the world’s leaders in the field of clothing, accessories and related products and retail services. Additionally, the Complainant owns numerous European, United States and foreign trademark registrations, providing the Respondent and others with constructive notice of its rights in and to its NEIMAN MARCUS Marks and its LAST CALL Marks.

Finally, the Respondent’s website copies from the Complainant’s authentic websites, further underscoring the Respondent’s bad faith use of the Complainant’s Marks. Specifically, the Respondent’s “trademark use” of the Complainant’s NEIMAN MARCUS Marks copies the identical stylization and positioning used on the Complainant’s authentic websites, and the layout the Respondent adopted for its website is substantially similar to that used by the Complainant’s authentic websites. It would stretch credibility for the Respondent to deny that it was aware of the Complainant and its NEIMAN MARCUS Marks and/or LAST CALL Marks at the time of registration of the disputed Domain Name, or any time thereafter.

In sum, the Respondent continues to wrongfully use the Complainant’s NEIMAN MARCUS Marks and LAST CALL Marks to draw Internet users to its website, create confusion, and improperly reap commercial profit through diverted sales. The Respondent’s use of the NEIMAN MARCUS Marks and the LAST CALL Marks is illegal and improper under the Policy.

B. Respondent

The Respondent, having been duly notified of the Complaint and of this proceeding, did not reply to the Complainant’s contentions nor take any part in the proceeding.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed Domain Name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and

(iii) The disputed Domain Name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the disputed Domain Name incorporates a complainant’s registered trademarks, this may be sufficient to establish that the disputed Domain Name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed Domain Name incorporates the Complainant’s NEIMAN MARCUS Marks and LAST CALL Marks, which makes the disputed Domain Name confusingly similar to these well-known and famous Marks. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products and services marketed under its well-known and famous NEIMAN MARCUS Marks and LAST CALL Marks.

The Panel agrees with the Complainant’s contention that confusing similarity has been found where, as in the present case, the Respondent has added, as a suffix, the generic word “sale” to the Complainant’s NEIMAN MARCUS Marks and LAST CALL Marks in the disputed Domain Name. See Saks & Co. v.saksfifthavenue-sale.com, WIPO Case No. D2013-1644. This addition does nothing to distinguish the disputed Domain Name from the Complainant’s well-known and famous NEIMAN MARCUS Marks and LAST CALL Marks.

The Panel further agrees with the Complainant’s contention that the addition of the gTLD “.com” to the disputed Domain Name does not avoid confusing similarity. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.

In view of all of the above, the Panel finds that the disputed Domain Name is identical to the Complainant’s well-known and famous NEIMAN MARCUS Marks and LAST CALL Marks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and interests (including lengthy commercial use of the same).

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed Domain Name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed Domain Name or a name corresponding to the disputed Domain Name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed Domain Name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in the proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

In the view of the Panel, the adoption by the Respondent of a domain name identical to the Complainant’s well-known and famous NEIMAN MARCUS Marks and LAST CALL Marks, which the Panel considers, as asserted above by the Complainant, was not by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products. Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known and famous NEIMAN MARCUS Marks and LAST CALL Marks and also the valuable goodwill that the Complainant has established in these trademarks through prior and lengthy commercial use, as evidenced above.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed Domain Name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed Domain Name.

Therefore, for all of the above reasons and also those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed Domain Name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which evidence bad faith registration and use. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the disputed Domain Name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [its] web site or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed Domain Name incorporating therein the Complainant’s well-known and famous NEIMAN MARCUS Marks and LAST CALL Marks, is trading unfairly on the Complainant’s valuable goodwill established in such Marks.

Furthermore, see Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. In the present case, the use by the Respondent of the disputed Domain Name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed Domain Name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed Domain Name by chance, but, as noted above, on the basis of clearly being aware of the notoriety of the Complainant’s well-known and famous NEIMAN MARCUS Marks and LAST CALL Marks and their prior and lengthy commercial use.

Also, the Panel finds that the Respondent’s use of the disputed Domain Name which has the effect of redirecting Internet users interested in the Complainant’s products and services to the Respondent’s website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use, but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright, WIPO Case No. D2007-0267.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all of these particular facts and circumstances into account and for all the above-mentioned reasons, as well as the others advanced by the Complainant in its various contentions set out above, including, in the present context, its contention that the Respondent’s use of the disputed Domain Name is having the effect of disrupting the Complainant’s legitimate business activities contrary to paragraph 4(b)(iii) of the Policy, the Panel concludes that the Respondent has registered and is using the disputed Domain Name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name <neimanmarcuslastcallsale.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: October 10, 2014