The Neiman Marcus Group, Inc. and NM
Nevada Trust v. Compassion Over Killing
Claim
Number: FA0308000190626
PARTIES
Complainants are The Neiman Marcus Group, Inc. and NM Nevada Trust, Dallas, TX (“Complainant”) represented by David J. Steele, of Christie, Parker &
Hale LLP. Respondent is Compassion Over Killing, Washington,
DC (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are and ,
registered with Gkg.Net, Inc.
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.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 26, 2003; the Forum received a hard copy of the
Complaint on August 27, 2003.
On
August 28, 2003, Gkg.Net, Inc. confirmed by e-mail to the Forum that the domain
names and are
registered with Gkg.Net, Inc. and that Respondent is the current registrant of
the names. Gkg.Net, Inc. has verified that Respondent is bound by the Gkg.Net,
Inc. 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
August 28, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of
September 17, 2003 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 [email protected] and [email protected]
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 26, 2003, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
“Panel”) finds that the 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 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. RespondentÂ’s
and domain names are confusingly similar to
ComplainantÂ’s NEIMAN MARCUS and NEIMANS marks.
2. Respondent does not have any rights or
legitimate interests in the and
domain names.
3. Respondent registered and used the
and domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, NM
Nevada Trust, owns and licenses to Complainant, The Neiman Marcus Group, Inc.,
(collectively “Complainant”) the Neiman Marcus trade name and the NEIMAN MARCUS
trademark. ComplainantÂ’s retail
business was established in 1907 and has grown into a nationwide chain of
thirty-five retail stores. Complainant
also operates a worldwide mail order catalog business in conjunction with the
NEIMAN MARCUS mark. Complainant holds
several registrations for the NEIMAN MARCUS mark with the U.S. Patent and
Trademark Office (“USPTO”) including, Reg. Nos. 934,177 (registered May 16, 1972)
and 1,593,195 (registered April 24, 1990).
Complainant uses the website in conjunction
with its business.
Complainant
claims that it has established common law rights in the NEIMANS mark through
ComplainantÂ’s use of the mark in commerce.
Complainant uses the NEIMANS mark in conjunction with its toll free
number, 1-800-NEIMANS, which is used for taking telephone orders and is widely
promoted. When Internet users type the
search word “Neimans” in the search engine, the first listed
hit is a link to ComplainantÂ’s website. Further proof of ComplainantÂ’s secondary
meaning in the NEIMANS mark is evidenced in Exhibit E of the Complaint which
shows that RespondentÂ’s disputed domain names link to the
website which criticizes Complainant and refers to boycotting NEIMANS.
Respondent
registered the and
domain names on August 29, 2001.
Respondent uses the disputed domain names to misdirect Internet users
searching for ComplainantÂ’s website to RespondentÂ’s
website.
RespondentÂ’s website contains disparaging
statements about Complainant and provides links to other websites that
criticize Complainant. Not only do the
websites criticize Complainant but the websites seek donations in support of
animal rights organizations and they sell clothing.
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.
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 rights in the NEIMAN MARCUS mark through registration of the mark
with the USPTO and ComplainantÂ’s use of the mark in commerce. Complainant also has established common law
rights in the NEIMANS mark through use of the mark in commerce. See Janus IntÂ’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. Respondent has the burden of refuting this assumption);
see also Bibbero Sys., Inc. v.
Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding common
law rights in the mark BIBBERO as Complainant, Bibbero Systems, Inc
(Complainant owns a trademark for its full company name) had developed brand
name recognition with the BIBBERO term by which Complainant is commonly known);
see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18,
2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to
demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis
for making the Complaint in the first place).
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 “kills.” Respondent’s addition of the generic word “kills” and
Respondent’s variation of the generic top level domain name “.org” and “.com”
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 “bomb,” 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 “.net” or “.com” 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
“kills” is insufficient to avoid a finding of confusing similarity. See Maple Leaf Sports & Entm’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 “LEAFS”); see also Body Shop Int’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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate
Interests
The record fails
to establish that Respondent was authorized or licensed to register or use
domain names that incorporate ComplainantÂ’s marks. The WHOIS information for the and
domain names fail to establish Respondent as
one commonly known by the disputed domain names or by the NEIMANSKILLS.COM or
NEIMANSKILLS.ORG marks. Therefore, the
Panel concludes that Respondent lacks rights or legitimate interests in the
disputed domain names 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 interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name); see also Tercent, Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
In addition,
RespondentÂ’s use of the and
domain names does not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii) because the disputed domain names fully
incorporate the NEIMAN marks and may cause Internet user confusion as to
whether the domain names are affiliated with or endorsed by Complainant. RespondentÂ’s domain names make it likely
that Internet users entering “Neiman” or “Neimans” into a search
engine will find the and
websites when searching for ComplainantÂ’s
website. RespondentÂ’s domain names are
sufficiently similar to ComplainantÂ’s marks such that the search engine results
might confusingly list RespondentÂ’s domain names when searching for
ComplainantÂ’s marks. See Weekley Homes, L.P. v. Fix My House Or
Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment
of a website containing criticism is not a legitimate use of the
domain name because the disputed domain name is
confusingly similar to Complainant’s DAVID WEEKLEY HOMES mark); see also
E. & J. Gallo Winery v. Hanna Law
Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a
legitimate free speech/complaint site does not give rights to use a famous mark
in its entirety); see also CabelaÂ’s
Inc. v. Cupcake Patrol, FA 95080 (Nat. Arb. Forum Aug. 29, 2000) (finding
that Complainant, owner of the Federally registered trademark ‘Cabela’s,’ and
user of the domain name was entitled to relief under UDRP
against Respondent for the bad faith registration and use of the domain name
because “by using Complainant’s marks in its domain
names, Respondent makes it likely that Internet users entering
“CabelaÂ’s” into a search engine will find in
addition to ComplainantÂ’s site . RespondentÂ’s domain name is
sufficiently similar to ComplainantÂ’s marks that the search engine results will
confusingly list RespondentÂ’s domain name when searching for ComplainantÂ’s
mark).
Internet users
may also be deceived by RespondentÂ’s domain names if they read the domain names
as two separate words, i.e. “neiman” and “skills”. The word “skills” added to the first part of Complainant’s NEIMAN
MARCUS mark might cause Internet users to mistakenly believe that the disputed
domain names relate to ComplainantÂ’s skills.
Furthermore, due
to RespondentÂ’s failure to respond to the allegations of the Complaint, the
Panel may presume that Respondent lacks rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(a)(ii). See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that RespondentsÂ’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad
Faith
Respondent had
actual knowledge of ComplainantÂ’s rights in the NEIMANS and NEIMAN MARCUS marks
because the disputed domain names fully incorporate the NEIMANS mark, the domain
names link to websites that criticize Complainant, and the marks are recognized
nationally and internationally.
Registration of a domain name, despite knowledge of ComplainantÂ’s
rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Digi Int’l, Inc. v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of ComplainantÂ’s
trademarks, actually or constructively”); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb. Forum Jan. 8, 2001)
(“Given the uniqueness and the extreme international popularity of the
[ODIE] mark, Respondent knew or should have known that registering the domain
name in question would infringe upon the Complainant’s goodwill”).
RespondentÂ’s use
of the and domain
names constitutes bad faith because the domain names might misdirect Internet
users searching for ComplainantÂ’s website to
RespondentÂ’s website which criticizes
Complainant. RespondentÂ’s diversionary
tactic may cause Internet user confusion as to whether the disputed domain
names or the website are endorsed by or affiliated
with Complainant. See Compagnie
Generale des Matieres Nucleaires v. Greenpeace IntÂ’l, D2001-0376 (WIPO May
14, 2001) (stating that although RespondentÂ’s complaint website did not compete
with Complainant or earn commercial gain, RespondentÂ’s appropriation of
Complainant’s trademark with a view to cause “damage and disruption to
[Complainant] cannot be right, still less where the use of the Domain Name will
trick internet users intending to visit the trademark ownerÂ’s site into
visiting the registrant’s site” in holding that the disputed domain name was
registered in bad faith); see also Jenner & Block LLC v.
Defaultdata.com, FA 117310 (Nat. Arb. Forum Sept. 27, 2002) (“Respondent’s
argument that there is an inherent conflict between the Internet and the
Constitutional right to free speech at the address to a business sounds
impressive but is no more correct than the argument that there is a
Constitutional right to intercept telephone calls to a business in order to
speak to customers. RespondentÂ’s conduct is not the equivalent of exercising
the right of free speech outside ComplainantÂ’s business street address but of
impermissibly blocking traffic to that street address”); see also Mission KwaSizabantu v. Rost, D2000-0279
(WIPO June 7, 2000) (finding that Respondent registered the domain names
, , and
in bad faith where Respondent published negative
comments regarding ComplainantÂ’s organization on the confusingly similar
website).
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 and
domain names be TRANSFERRED from Respondent to Complainant, The Neiman Marcus Group, Inc.
Sandra Franklin, Panelist
Dated:
October 7, 2003