WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NM Nevada Trust v. Jian Pousi
Case No. D2011-1842
1. The Parties
The Complainant is NM Nevada Trust of Dallas, Texas, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is Jian Pousi of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <lvneimanmarcus.com> is registered with Jiangsu Bangning Science & Technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2011. On October 25, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2011, Jiangsu Bangning Science & Technology Co. Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 1, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On November 1, 2011, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 proceeding commenced on November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 20, 2011. 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, NM Nevada Trust, is a business trust based in the United States of America.
The Complainant is the owner of registrations for the trade mark NEIMAN MARCUS in the United States of America and in numerous other countries around the world, including in China, where the Respondent is based (the “Trade Mark”).
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on August 4, 2011.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant has operated retail stores under the Trade Mark in the United States of America since 1907. The Complainant operates more than 70 retail stores throughout the United States of America under the Trade Mark, and reaches hundreds of thousands of customers via its mail order catalogues and its website at the domain name <neimanmarcus.com>. The Complainant is one of the most successful and prestigious specialty retailers in the United States of America, generating more than USD 4 billion in sales in the 2011 fiscal year.
The Complainant’s advertising expenditure related to the Trade Mark exceeded USD 86 million in the 2011 fiscal year. As a result of this long and extensive use and advertising, the Complainant has acquired valuable goodwill and reputation in the Trade Mark among consumers and professionals in the fashion and retail community.
Since 1995, the Complainant has maintained an active presence on the Internet, including through its website at the domain name <neimanmarcus.com>, where it promotes its retail services, clothing, and related products under the Trade Mark.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety together with the prefix “lv”, which is an acronym for the well known luxury mark LOUIS VUITTON.
The Complainant sells Louis Vuitton products through dedicated boutiques within its retail stores.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The website to which the disputed domain name is resolved offers for sale discounted Louis Vuitton products (the “Website”).
The disputed domain name has therefore been registered and used in bad faith, in order to attract users, for commercial gain, to the Website, without the authorisation or approval of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreements for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the disputed domain name consists of Latin letters rather than Chinese characters;
(2) the content of the Website is entirely in English;
(3) the Website allows users to purchase goods in U.S. Dollars, Euros, G.B. Pounds, Canadian Dollars, Australian Dollars and Swiss Francs, with the default selection being U.S. Dollars, indicating that the Website is directed to users in countries in which English is a primary or well known language;
(4) the evidence in this case, including the Website, is in English; and
(5) the content of the Website indicates that the Respondent has a very good understanding of English, such that conducting the proceeding in English would not be prejudicial to the Respondent.
The Respondent did not file any submissions with respect to the language of the proceeding.
The Registrar has transmitted to the Center its verification response confirming that the language of the registration agreement for the disputed domain name is Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel notes, for the reasons specified by the Complainant in the Complaint and in its submissions regarding the language of the proceeding, it appears the Respondent is proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that the language of the proceeding shall be English.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by over 100 years the date of registration of the disputed domain name.
UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for the purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of a third party trade mark to a disputed domain name comprising the complainant’s trade mark will have no effect on a determination of confusing similarity between the domain name and the complainant’s mark (Coach, Inc. v. chen feisheng, chen fei sheng, chen fei, lin jun, yang xiaochun, chen yuxuan, lin xiao fu, WIPO Case No. D2010-2004).
The disputed domain name comprises the Trade Mark in its entirety together with a well known abbreviation for the mark LOUIS VUITTON, “lv”. The Panel finds that the use of the Trade Mark together with the prefix “lv” does not serve to distinguish the disputed domain from the Trade Mark in any material way.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark, and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 100 years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The evidence shows that the Respondent is using the disputed domain name in respect of the Website, which offers for sale discounted Louis Vuitton goods.
In all the circumstances, and given the Panel’s findings below in respect of bad faith, the Panel concludes that such conduct does not amount to a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant sells Louis Vuitton products at its retail stores. The Website offers for sale discounted Louis Vuitton products by reference to the Trade Mark. In particular, there are several links at the bottom of the Website (which, when clicked, simply link back to the Website), each of which comprise the Trade Mark and clearly suggest some sort of affiliation with or sponsorship or approval by the Complainant. These links include:
1. “Neiman marcus Louis Vuitton”;
2. “Louis Vuitton at Neiman Marcus”;
3. “Louis Vuitton Neiman Marcus”; and
4. “does neiman marcus sell Louis Vuitton”.
The Panel concludes that, in all the circumstances, the Respondent has registered the disputed domain name comprising the Trade Mark, without the authorization or approval of the Complainant, in order to profit by attracting users to the Website. The Panel finds such use of the Trade Mark is clear evidence of bad faith.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <lvneimanmarcus.com> be transferred to the Complainant, without prejudice to any rights the owner of the LOUIS VUITTON mark may have in respect of the disputed domain name.
Sebastian M.W. Hughes
Dated: December 21, 2011