Neiman Marcus recently filed a complaint to have the Fund for Animals’ ownership of the NeimanCarcass.Com/.Org/.Net domain names stripped from the animal rights group and handed over to Neiman Marcus.
Neiman Marcus filed the complaint with the National Arbitration Forum and argues that the domain names are confusingly similar to Neiman Marcus’ trademark.
The Fund for Animals’ issued a press release on April 20 accusing Neiman Marcus of trying to bully the names away. In the press release, Michael Markarian said,
It is laughable that any reasonable person could be confused between a luxury retailer selling fine apparel, jewelry and housewares, and a non-profit animal protection organization selling t-shirts and bumper stickers with campaign slogans. Neiman Marcus is simply engaging in ‘cyber-bullying’ to insulate itself from public criticism of its socially irresponsible practice of selling fur.
The group that hosts the NeimanCarcass web sites, Carol/Trevelyan Strategy Group, agrees and argued in a filing with the National Arbitration Forum that, “Courts have held that ‘parody and satire are deserving of substantial freedom — both as entertainment and as a form of social and literacy criticism.'”
For once, I agree with the animal rights activists. If Neiman Marcus can claim that NeimanCarcass is infringing on its trademark, then its hard to see how something like FundforAnimalsSucks.Com wouldn’t also be infringing. The bizarre thing, however, is that Neiman Marcus has won previous such domain name disputes that it filed with the National Arbitration Forum.
In August 2003, for example, the National Arbitration Forum ordered that Compassion Over Killing had to hand over NiemansKills.Org and NeimansKills.Com to Neiman Marcus. In that decision, the National Arbitration Forum absurdly ruled that (emphasis added),
RespondentÂ’s and domain names are confusingly similar to ComplainantÂ’s NEIMANS mark because the disputed domain names fully incorporate the mark and merely add the generic word Â“kills.Â” RespondentÂ’s addition of the generic word Â“killsÂ” and RespondentÂ’s variation of the generic top level domain name Â“.orgÂ” and Â“.comÂ” are insufficient to circumvent the Panel from finding the domain names confusingly similar to the NEIMANS mark. See Pfizer, Inc. v. Papol 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 Â“bomb,Â” the domain name is rendered confusingly similar to ComplainantÂ’s mark); see also Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding the domain name was confusingly similar to Complainant’s VIVENDI UNIVERSAL mark, because Non-English speakers would associate the domain name with the owner of the trademark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as Â“.netÂ” or Â“.comÂ” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
RespondentÂ’s omission of the MARCUS portion of ComplainantÂ’s mark and addition of the word Â“killsÂ” is insufficient to avoid a finding of confusing similarity. See Maple Leaf Sports & EntmÂ’t Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name is confusingly similar to ComplainantÂ’s marks, where Complainant holds many trademarks that contain the term Â“LEAFSÂ”); see also Body Shop IntÂ’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name is confusingly similar to ComplainantÂ’s THE BODY SHOP trademark).
That’s just plain stupid, and indicative of the problems in the way that domain disputes are resolved. The full text of the Compassion Over Killing decision can be read here.
The fur’s flying on three web sites. Gerald P. Merrell, The Baltimore Sun, April 26, 2004.
The Neiman Marcus Group, Inc. and NM Nevada Trust v. Compassion Over Killing. National Arbitration Forum, October 7, 2003.
“Cyber Bully” Neiman Marcus Tries to Shut Down NeimanCarcass.com Web Site, Stifle Criticism of Fur Sales. Press Release, Fund for Animals, April 20, 2004.
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