WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nordstrom, Inc. and NIHC, Inc. v. Hatching Ideas, LLC
Case No. D2001-0418
1. The Parties
Complainants are Nordstrom, Inc., a corporation with a place of business in Seattle, Washington, U.S.A., and NIHC, Inc., a corporation with a place of business in Portland, Oregon, U.S.A. They are referred to collectively in this decision as complainants.
Respondent is Hatching Ideas, LLC, a corporation with a place of business in Lawrence, Kansas, U.S.A. Complainant avers that co-respondents are Michael D. Gordon, "a member of Hatching Ideas, LLC", and Ryan Gordon, "a member of Hatching Ideas, LLC". All three are referred to here collectively as "respondents".
2. Domain Names and Registrar
The domain names in issue are:
The registrar is Tucows, Inc., 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada (Tucows).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the complaint via email on March 28, 2001, and in hard copy form on April 2, 2001. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainants made the required payment to the Center. The formal date of the commencement of this administrative proceeding is April 4, 2001.
On March 30, 2001, the Center transmitted via email to Tucows a request for registrar verification in connection with this case. On April 3, 2001, Tucows transmitted via email to the Center Register’s confirmation that (1) "Respondent" is the current registrant of the domain names in issue, (2) the Policy applies to the domain names, (3) Michael Gordon is the administrative and billing contact, and Ryan Gordon is the technical contact, and (4) the domain names are "currently on hold within our system. ... to ensure that no changes of ownership or Registrar occur for the duration of the dispute."
On April 4, 2001, the Center transmitted to respondents Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via post/courier and email. The Center advised, inter alia, that the response was due by April 23, 2001, and pointed out the response should be in accordance with requirements set out in the Rules and the Supplemental Rules.
On April 24, 2001, the Center received respondents’ response via email, and on April 24, 2001, in hard copy.
On May 1, 2001, the Center received complainants’ "Clarification/Reply" via email, and on May 2, 2001, in hard copy. This document was accompanied by an email message dated April 30, 2001, purporting to explain the need for the "reply brief", and advising that a copy had been sent to "Respondents ... so that they may provide their own reply, if desired."
On May 1, 2001, Ryan Gordon requested advice from the Center via email as to whether the "clarification" had been accepted, and the "privilege to respond."
On May 2, 2001, the Center advised the parties via email that it is in the Administrative Panel’s sole discretion as to whether supplemental information will be considered.
On May 15, 2001, the Center received "Response to ‘Clarification’ By Complainant". On July 31, 2001, the Center advised the parties that the Administrative Panel had been appointed, comprising Sally Abel, Richard Page, and David Plant (Presiding Panelist). The Center advised that absent exceptional circumstances, the panel is required to forward its decision to the Center by August 14, 2001. On August 12, 2001, the presiding panelist advised the Center by email that, due to scheduling conflicts, the draft decision would not be prepared for at least three weeks, and inquiring as to a 30 day extension of time.
4. Factual Background; Parties’ Contentions
a. The Trademark
The complaint is based on trademarks and service marks as averred by complainants as follows:
NORDSTROM has been used since 1901 "to promote retail store services featuring shoes, clothing, accessories, footwear and leather goods. Over the years, the goods and services offered under the NORDSTROM mark have continuously grown."
The NORDSTOM service mark is the subject of 1984 U.S. Trademark Registration No. 1,281,000 for retail clothing store services. (Annex 5 to the complaint; first use of the mark in commerce is stated to have been in 1972.)
The NORDSTROM trademark is the subject of 1984 U.S. Trademark Registration No. 1,280,785 for men’s, women’s and children’s clothing and footwear. (Annex 5; first use in commerce is stated to have been in 1972.)
The NORDSTROM service mark is the subject of an August 22, 2000 U.S. Trademark Registration No. 2,378,940 for credit card services. (Annex 5; first use in commerce is stated to have been in 1967.)
"Complainant" is using the NORDSTROM trademark and service mark in connection with a variety of other goods and services.
NORDSTROM 2ND NATURE, NORDSTROM THE CATALOG, NORDSTROM BEST, and NORDSTROM RACK are the subjects of additional U.S. trademark registrations.
The NORDSTROM trademark is registered in other countries for various goods and services.
"NORDSTROM, NORDSTROM.COM and other related trademarks and service marks owned and used by [complainants] are recognized throughout the world as indicators of a source of such goods and services."
Complainants aver the "NORDSTROM brand" is famous to consumers of clothing, accessories, leather goods and shoes throughout the U.S. and in Europe. After more than 100 years, more than 140 stores "in the NORDSTROM retail chain" extend in to 24 U.S. states and Europe. Also, complainants offer and sell clothing, etc. to individuals in retail locations "and throughout the rest of the world" through their online retail store located at <www.nordstrom.com>. "Consumers in the traditional marketplace and online consumer worldwide recognize the NORDSTROM brand as indicative of quality products and exceptional service."
b. The Complaint Re Respondents’ Activities
Complainants contend that the domain names in issue are identical or substantially identical to the NORDSTROM and NORDSTROM.COM trademarks and service marks. Complainants point out that in six instances, the domain names incorporate the term "Nordstrom" preceded by the number 18, sometimes with and sometimes without an hyphen. Complainants aver none of the numbers has any distinctive value. Thus, these six "Nordstrom" domain names should be regarded as identical to the NORDSTROM and NORDSTROM.COM marks.
Complainants contend the remaining four domain names are merely misspellings of complainants’ marks -- replacing "D" with "F". Complainants contend that, as the two letters are adjacent on a keyboard, "it appears that the latter domain names are designed to take advantage of typographical errors when Internet users attempt to access Complainant’s NORDSTROM.COM web site."
Thus, complainants conclude that "all of the subject domain names are either identical or confusingly similar to Complainant’s [sic] registered marks."
In urging that respondents have no rights or legitimate interests in the domain names in issue, complainants first refer to their letter of November 9, 2000, to "Respondent", advising that the six domain names then registered infringed complainants’ marks and demanding that respondents either cancel the domain names or assign them to "Complainant" . Complainants aver that "Respondent" never replied (Annex 6, Martin declaration).
Next, complainants aver that on December 1, 2000, Martin emailed a reminder to "Respondent" and requested a reply to the November 9 letter, but "Respondent never replied" (Annex 6, Martin declaration).
Complainants aver that Martin then called Ryan Gordon on December 8, 2000. Ryan Gordon allegedly stated he and Michael Gordon were not interested in using any of the domain names and asked Martin to call him back the following week (Annex 6, Martin declaration).
Complainants aver that, on December 15, 2000, Martin called Ryan Gordon, who for the first time stated he had decided to use the domain names, "but would not tell Complainant how" (Annex 6, Martin Declaration). Complainants aver that to date respondents still have not explained how they will use the ten domain names.
Complainants aver that, on December 15, 2000, complainants’ attorneys sent a letter to "Respondent" (Annex 7, letter to Messrs. Michael Gordon and Ryan Gordon), charging violation of the U.S. Anticybersquatting Consumer Protection Act and demanding that respondents transfer the six domain names to complainants .
Complainants aver that, on January 6, 2001, Michael Gordon transmitted an email to complainant’s attorney (Annex 8), asserting that respondents were not using and did not intend to use any of the six domain names, and that Michael Gordon had reserved instead the four "norfstrom" domain names . Complainants argue that Michael Gordon apparently asserts he can use the ten domain names because "Nordstrom, Inc. is ‘not the only company doing business under the surname Nordstrom.’" Complainants aver:
Michael Gordon does not assert he or his company is commonly known as "NORDSTROM" or "NORFSTROM".
He does not assert any one else associated with his company has the surname "Nordstrom" or "Norfstrom".
Michael Gordon provides no evidence he has ever used the domain names (he admits the contrary) and is unwilling to provide any evidence as to preparation for use of the domain names.
It should be presumed "Respondent" knew of complainants’ "famous NORDSTROM marks," and respondents’ sole motivation is to attract, for financial gain, unwitting Internet users who type or mistype complainants’ "famous trademark or domain name."
Complainants aver that respondents’ use of the domain names is likely to attract Internet users to web sites associated with the domain name by creating a likelihood of confusion between the domain names and complainants’ "registered trademarks, service marks and/or domain name." Also, respondents’ use of the domain names is likely to confuse Internet users as to the source of information on web sites related to the domain names, and "suggests that the subject domain names are sponsored by, affiliated with, or endorsed by Complainant." Complainants argue that because their marks are famous and registered around the world, "it should be presumed that such actions, such confusion, and such suggestions have been taken and/or created by Respondents intentionally and with knowledge."
Complainants request that the panel decide that each of the ten domain names be transferred to "the Complainant".
The complaint concludes with the requisite certification as to completeness and accuracy and is signed by complainants’ counsel.
c. The Response
At least inferentially from the information in paragraphs 4 - 6 of the response, respondents agree that Michael Gordon and Ryan Gordon are "co-respondents".
At the outset, "Respondent" requests that the panel find that complainants attempted to reverse domain hijack "the disputed domains" on December 8, 2000, and again on December 17, 2000. Also, respondents request that the panel deny the remedies requested by complainants.
Respondents assert that Ms. Martin did not accurately recount the conversations of December 8, 2000 and December 15, 2000, "in order to cover up her actions of December 8, 2000, and the subsequent actions of Network Solutions, Inc on December 17, 2000." Respondents aver that, on December 8, 2000, Michael Gordon received a "carbon copy" of an email from Ms. Martin to Ryan Gordon. (A copy of the email is purportedly at Annex 3 to the response.) Respondents note that the December 8 email is not referred to in the complaint or the Martin declaration. The December 8 email from Martin to Ryan Gordon states:
"Pursuant to our conversation today, we understand you do not have plans to use the 18nordstrom.com/net, 1-8nordstrom.com/net, 1-8-nordstrom.com/net domain names registered to Hatching Ideas LLC. Per our discussion, I have submitted requests to change the Registrar and Registrant regarding these names. You should be receiving emails to confirm the transfers anytime. Please follow Network Solutions’ instructions for responding and copy me on your responses. I will call you Monday morning per your request to discuss this matter further. Thank you for you cooperation.
Respondents submit a declaration by Ryan Gordon (Annex 4 to the response). In his declaration, Ryan Gordon states with regard to the December 8 telephone conversation:
"I expressed to Ms. Martin that she or the company Ms. Martin represented at the time ‘had nothing to worry about’ because we did not have plans on using the domain names in ways that would infringe on the rights of the company she represents. ... I told her that our company was not interested in compensation for the domain names, and that I would not transfer the names. I was in a meeting at the time of the call, and told her if she wished to discuss matters further, she would have to call back the following week."
Respondents assert that Ms. Martin created the December 8 "carbon copy" letter "with the intentions of reverse hijacking the disputed domains from the Respondent."
Respondents assert that Michael Gordon called Ryan Gordon to inquire about the December 8 email from Ms. Martin. In his declaration, Ryan Gordon states, inter alia:
"This letter [i.e. the Martin December 8 email] misconstrues my conversation with Ms. Martin and implies that I agreed to transfer the domains to her. ... In my discussion with Michael Gordon I told him of my conversation with Ms. Martin and that I did not agree to transfer any domain names. I also warned him that any transfer requests regarding the domains would arrive in his email box. At this point we were very alarmed to the possibility that Ms. Martin might be trying to have the domains transferred inadvertently by Michael Gordon or someone else that had merely read her carbon copy. I emphatically emphasized in this conversation, that I did not authorize any transfer of domains to Ms. Martin. From this point forward we regarded this situation as an attempt of reverse domain name hijacking and agreed to keep each other informed of all correspondence with Ms. Martin." (Emphasis in original declaration.)
Respondents aver that on December 17, 2000, "Dr. Michael D. Gordon received a Change of Registrar Application (‘CRA’) for [the six domain names] in an e-mail from Network Solutions, Inc." (Annex 5). On the same day, Michael Gordon responded by return email that he did not agree to the Change or Registrar Application (Annex 6). Respondents note that this "denial of the Change of Registrar" is not mentioned in the complaint.
Respondents assert the document dated January 16, 2001 (Annex 2 to the response) is in fact the letter of November 9, 2000, referred in the Martin declaration. Respondents contend the date on the letter was changed "to cover the reverse hijacking events" of December 8 and 17, 2000.
Respondents contend that complainants’ counsel, Mr. Costanza, never refuted the charge in Michael Gordon’s January 6, 2001, email that:
" ... your client tried to ‘steal’ our domain. ... I don’t know what else to call it when your client attempted to transfer the ownership of our domain to them through ICANN -- without our permission!"
Accordingly, respondents request that the panel find that complainants attempted reverse domain name hijacking.
With regard to the three elements of Policy Paragraph 4(a), respondents contend that the disputed domains are "not identical or confusingly similar to the trademark or services that the Complainant has rights" (sic.) Respondents do not object to complainants’ claims as to the goods and services with respect to which they have trademark rights. Respondents contend that NORDSTROM is not a famous mark, the first U.S. registration was in 1947 to Rockwell Manufacturing, and Nordstrom is a common surname used in all kinds of businesses (citing Michael Gordon’s January 6, 2001, email concerning uses of Nordstrom).
Respondents contend that Annex 9 to the response lists hundred of businesses and individuals doing business under the common surname Nordstrom, and urges that the surname Nordstrom is not unique to complainants. Respondents contend that their Annex 10 contains examples of uses of Nordstrom around the world. Respondents submit Annex 11 lists domain names that include "Nordstrom" "promoting many types of businesses."
Respondents assert they are "not sure how the Complainant legally found out the Respondent’s relationship between the disputed domains and the toll-free number, 1-866-737-8766. This number rings into one of our phone lines, a phone that is turned off." Respondents question the basis for complainants’ assertion (counsel’s December 21, 2000, letter to the Gordons (Annex 8 to response)) that they should have rights to the number.
Respondents assert they are "a creative strategic marketing company that has developed new concepts in the use of alphanumeric telephone numbers and word numbers." They contend that have been reluctant to disclose information because of the "impact this might have on the patentability of these new concepts." Respondents aver that complainants never responded to the January 6, 2001, request for a "non-compete/non-disclosure agreement" (Annex 7 to the response).
Respondents describe their purported discovery of creating multiple-letter phone words, e.g., 1-800flower. Respondents assert they have 1-Tonometers installed in one of their companies, RotaSystems -- a company created by respondents to market "several of its patented inventions."
Respondents contend that, because complainants sent their first letter on November 7, 2000, only seven days after respondents registered <1-8Nordstrom.com>, "this prevented our construction of the 1-8NorthPolel.com [sic] website." Respondents describe their "wishes" for creating a North Pole website. Respondents assert that toll-free numbers are more accessible than the public is generally aware of, toll-free numbers give access to more than 300 million potential customers in North America, and domain names give access to billions of potential customers -- free. Respondents assert that eventually 1-8NorthPole will be accessible toll-free to anyone in the world. Respondents assert that:
"... Respondent felt that regions of the world might be attracted to the ‘North Pole’ that did not understand the concept of Santa Claus. So the Respondent proposed a fictional person with the characteristics of an elf, Good Samaritan, angel and everyone’s best friend. The respondent decided on the name, Nordstrom."
Respondents contend the <1-8Nordstrom.com> domain name was registered for a use that does not conflict with complainants’ trademark rights, asserting:
"The reputed domains will be used as the not-for-profit division of 1-8NorthPole. The reputed domains will be used as a child hot line. The Respondent wants to develop 1-8Nordstrom as a safe, educational, and fun place where children can interact with Santa and his helpers."
Respondents assert they were limited in the names they could associate with "866". They contend:
"Respondent wanted the name to be believable, as the character lived at the ‘North Pole’. To name a few of the Respondent’s ideas the name Tom, Tony, Toni, Monty, Morgan, Norm and Norman were considered. However, all of these names were too short. ... The Respondent felt most of the possible surnames sounded too Anglo-Saxon or Latin.
"Therefore, Respondent started thinking about surnames for the ‘special person’ that helped Santa Claus. Reviewing books of surnames the Respondent found the name, Nordstrom. It was listed as being Swedish and meant ‘northern stream’. The Respondent felt that this was a perfect name. Nordstrom fit the Respondent’s requirements for a name."
Respondents elaborate on the etymological reasons why Nordstrom is the perfect name. They contend also that:
"During the discovery process of the 1-8Nordstrom project, a second concept came forward, 1-8Norfstrom. ... The Respondent thought that the ‘f’ might ‘work’ with the concept of elf or dwarf."
Respondents contend that, in light of the odds, if they had designed the domain name to trick customers who accidentally use the wrong key, it would "make more sense for the Respondent to have registered Mordstrom and change the first letter instead of the fourth letter."
Respondents assert they have not registered any other variations of Nordstrom. They assert Norfstrom is a completely unique name, found nowhere on the Internet except in connection with this proceeding (Annex 15 to the response).
Respondents contend that the three "18" Norfstrom domain names are "completely unique and should be allowed by the Administrative Panel." Respondents assert that complainants have not proved all of the requirements of Policy, Paragraph 4(a) and request the panel to deny the remedies requested by complainants.
The response concludes with R. Gordon’s certification, on behalf of all Respondents, as to completeness and accuracy.
d. Clarification/Reply and Response to "Clarification" By Complainant
The panel did not request either the Clarification/Reply or the Response to "Clarification" By Complainant. Rule, Paragraph 12. The panel decides in its discretion not to take into account any statement in either document.
5. Discussion and Findings
Paragraph 4(a) of the Policy directs that complainants must prove, with respect to each domain name in issue, each of the following:
(i) The domain name is identical or confusingly similar to a mark in which complainants have rights, and
(ii) Respondents have no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
a. Identity or Confusing Similarity
Complainants have the burden of proving this element and each of the other two elements of Paragraph 4(a) of the Policy.
Abundant authority supports the conclusion that each domain name in issue is identical or confusingly similar to the trademark and service mark NORDSTROM. The addition of prefixes -- such as meaningless numbers, and the substitution of one letter for another -- especially when they are adjacent on a keyboard, do not detract from "identity" as that term has been construed in connection with Policy Paragraph 4(a)(i). E.g. CBS Broadcasting v. Sale’s, WIPO D2000-0255, Yahoo! Inc. v. David Ashby, WIPO D2000-0241, PACCAR v. Enyart Associates, WIPO D2000-0289. Even if there were no such identity, it is apparent that each domain name in issue is confusingly similar to the trademark and service mark NORDSTROM.
It is beyond dispute that, under United States law, complainants have rights in the trademark and service mark NORDSTROM with respect to clothing and related goods and services. The trademark and service mark are the subject of registrations on the Principal Register of the United States Patent and Trademark Office issued 16 years before respondents registered the domain names in issue.
In light of the foregoing, on this record, the Panel finds that complainants have carried their burden of proof under Paragraph 4(a)(i) as to the domain names in issue.
b. Rights or Legitimate Interests
Complainants’ prior use and registrations of the NORDSTROM marks do not alone preclude respondents from having any rights or legitimate interests in the domain names in issue. The panel must consider the rights and interests respondents claim and their purpose in asserting such rights and interests. Policy Paragraph 4(c) provides illustrative circumstances which may demonstrate respondents’ rights and interests in one or more of the domain names.
Here, respondents have not used any of the ten domain names as an address for an active web site. There is no evidence that respondents have prepared for any such use. Indeed, complainants notified respondents of this dispute only nine days after the first three domain names were registered, only four days after the next three domain names were registered, and about two months before the four "f" domain names were registered (Annexes 1 and 6 to the complaint). None of the respondents asserts that any respondent has been commonly known by one or more of the domain names in dispute. That Nordstrom is a Swedish surname or has been used by other business entities do not avail respondents in this regard.
On this record, respondents’ stated wish to create a web site, whether fanciful or not, does not endow them with any rights or legitimate interests in any of the domain names, each of which is identical or confusingly similar to the NORDSTROM marks.
The Panel finds that complainants have carried their burden of proof with regard to Paragraph 4(a)(ii) as to the domain names in issue.
c. Registration and Use in Bad Faith
In appropriate circumstances, bad faith registration and use of a contested domain name can be inferred from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by complainants.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of "evidence of the registration and use of a domain name in bad faith." None of the four illustrative circumstances fully fits the facts here. However, from the averments and contentions of the parties here, it is fair to infer bad faith with regard to both registration and "use".
Respondents’ elaborate explanation of how they came to select "Nordstrom" and its variants for the ten domain names is not supported by any contemporaneous record. Nor is it supported by the Ryan Gordon declaration. That declaration refers only to respondents’ quarrel with complainants’ as to the facts concerning communications between the parties in December 2000. It is difficult to imagine a good faith reason for respondents’ selection of six "Nordstrom" domain names before notice from complaints or for respondents’ selection of four additional "Norfstrom" domain names after notice and discussion of the dispute. It simply does not ring true that "Nordstrom" or "Norfstrom", with or without prefixes, are more apt as addresses for respondents’ proposed North Pole site than "NorthPole" itself. Nor is there any justification for registering ten variations of the term NORDSTROM. Respondents’ registration of the ten domain names in issue smacks of bad faith conduct.
Also, respondents’ wish list as to their future use of one or more web sites does not save them from a finding of bad faith use. Non-use under the circumstances fantasized here constitutes bad faith use. If the Policy were interpreted otherwise, any one could register dozens of variants of trademarks and service marks and warehouse them with impunity -- even if all other elements of Policy Paragraph 4(a) were present. Such a topsy-turvy result cannot be endorsed.
Accordingly, the Panel finds that, under Paragraph 4(a)(iii), respondents have registered and used each of the ten domain names in issue in bad faith.
d. Reverse Domain Name Hijacking
Respondents’ intense focus on the communications between the parties in December 2000 and January 2001 does not support a case of reverse domain name hijacking. The panel has found that respondents have no rights or legitimate interests in the ten domain names in issue. At the same time, the panel has found that complainants have rights in the trademark and service mark NORDSTROM. There can be no reverse domain name hijacking under these circumstances.
In light of the findings by the panel, the panel decides that complainants have met their burden of proof with respect to each of the three elements of Policy Paragraph 4(a).
Accordingly, the panel requires that the registrations of each of the ten domain names in issue be transferred to complainants.
In addition, the panel denies respondents’ request that the panel find complainants have engaged in reverse domain name hijacking.
David W. Plant
Sally M. Abel
Richard W. Page
Dated: September 10, 2001
1. Complainants state that a copy of the November 9, 2000 letter is attached at Annex 6. However, at Annex 6, a two-page declaration dated March 19, 2001 and signed by Jennifer Martin appears, together with a copy of a letter dated January 16, 2001, from Ms. Martin to Mr. Michael Gordon. This discrepancy is addressed infra.
2. The six domain names are: <1-8-nordstrom.com>, <1-8-nordstrom.net>, <1-8nordstorm.com>, <1-8nordstrom.net>,<18nordstrom.com>, and <18nordstrom.net> (Annex 1).
3. In the December 21, 2000, letter, counsel noted that each of the six domain names "translates to the toll-free telephone number 1-866-737-8766." Asserting this constituted dilution of the famous NORDSTROM mark, counsel demanded also that the telephone number be transferred to complainants.
4. Michael Gordon’s email commences by requesting that complainants’ counsel "sign a non-compete/non-disclosure agreement before I discuss our projects." After expressing his shock at complainants’ charges, Michael Gordon stated "to resolve this problem we are willing to use the name, ‘Norfstrom’ in our project." Also, Michael Gordon stated that various searches yielded no uses of "Norfstrom", and reported the results of several searches on the name "Nordstrom" -- including "285 registrations with ICANN that include the name Nordstrom." Michael Gordon concluded that, as a result of their research, "it was our opinion that our application of Nordstrom was acceptable and legal."