The Neiman
Marcus Group, Inc. and NM Nevada Trust v. Compassion Over Killing and Nick
Patch
Claim Number: FA0212000137222
PARTIES
Complainant is The Neiman Marcus Group, Inc., Dallas, TX (“Complainant”) represented by David J. Steele of Christie Parker & Hale LLP. Respondent is Compassion Over Killing and Nick Patch, Washington, DC (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <neiman-marcus.org> and <neimanmarcusgroup.info>, registered with gkg.net, Inc., Go Daddy Software,Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 19, 2002; the Forum received a hard copy of the Complaint on December 23, 2002.
On December 20, 2002, gkg.net, Inc., Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <neiman-marcus.org> and <neimanmarcusgroup.info> are registered with gkg.net, Inc., Go Daddy Software,Inc. and that Respondent is the current registrant of the name. gkg.net, Inc., Go Daddy Software, Inc. verified that Respondent is bound by the gkg.net, Inc., Go Daddy Software, 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 December 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 9, 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 postmaster@neiman-marcus.org and postmaster@neimanmarcusgroup.info 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 January 17, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 allegations:
1. The domain name registered by Respondent, <neiman-marcus.org>, is identical to Complainant’s NEIMAN-MARCUS mark and that the <neimanmarcusgroup.info> domain name is confusingly similar to Complainant’s NEIMAN-MARCUS mark.
2. Respondent has no rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent failed to submit a Response.
FINDINGS
Complainant holds numerous registrations for its NEIMAN-MARCUS mark with the United States Patent and Trademark Office (“USPTO”), including Registration Numbers 601,375; 601,723; and 1,154,006. Complainant has done business under the NEIMAN-MARCUS mark since 1907 when it opened its first specialty store in Dallas, Texas. Complainant is internationally recognized as an innovator in high-end fashion and merchandising. Over the last century, Complainant’s NEIMAN-MARCUS mark has become one of the most famous and distinctive marks in retailing and the mark is synonymous with high fashion retailing. Complainant operates 31 stores in premier retailing locations throughout the United States. Complainant’s sales revenues for its stores and mail order catalogs are annually in excess of one billion dollars. In 1999, Complainant launched its e-commerce website at <neimanmarcus.com>.
The domain name registered by Respondent, Compassion Over Killing, <neiman-marcus.org> and <neimanmarcusgroup.info> were registered November 15, 2000. Respondent is using the disputed domain names to direct Internet users to <neimancarcass.org>, an anti-fur website sponsored by Respondent. Respondent’s website also contains numerous links to organizations that seek financial contributions to support their animal rights movements. Some of the links lead to organizations that sell merchandise.
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 will draw such inferences as the Panel 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.
Complainant has established in this proceeding that it has rights in the NEIMAN-MARCUS mark through registration with the USPTO and by continuous use of the name in its retail business since 1907.
The domain name registered by Respondent, <neiman-marcus.org>, is identical to Complainant’s NEIMAN-MARCUS mark because it incorporates Complainant’s mark in its entirety and merely adds the generic top-level domain “.org.” The addition of a top-level domain such as “.org” has no additional distinctive characteristics that would establish a distinct domain name because it is a required element of every domain name. Thus its addition is irrelevant when conducting a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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).
The disputed domain
name registered by Respondent, <neimanmarcusgroup.info>, is confusingly similar to Complainant’s
NEIMAN-MARCUS mark because it incorporates Complainant’s entire mark and merely
adds the generic word “group.” The
addition of a generic term to the end of a famous mark does not create a
distinct mark capable of overcoming a claim of confusing similarity because
Complainant’s mark is still the dominant feature of the domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the Complainant combined with a generic word or term); see also Body Shop Int’l PLC v. CPIC NET &
Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name
<bodyshopdigital.com> is confusingly similar to the Complainant’s THE
BODY SHOP trademark).
Accordingly, the Panel finds that Policy ¶
4(a)(i) has been satisfied.
Complainant established in this proceeding that it has rights to and legitimate interests in the mark used by Respondent to register the two disputed domain names. Respondent did not contest Complainant’s allegations or the evidence contained in Complainant’s Submissions. When Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). Further, Respondent failed to invoke any circumstances that demonstrate rights or legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent is using the two domain names in dispute to confuse Internet users and redirect them to <neimancarcass.org>, Respondent’s anti-fur website. This type of use is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent diverts consumers to its own website by using Complainant’s trademarks).
Respondent submitted no evidence to establish that it is commonly known by any name other than “Compassion Over Killing.” With the fame of Complainant’s NEIMAN-MARCUS mark, the Panel cannot envision a situation in which Respondent could show that it is commonly known by the Complainant’s NEIMAN-MARCUS mark or by the disputed domain names, <neiman-marcus.org> or <neimanmarcusgroup.info>. On the contrary, all evidence leads to the inference that Respondent registered the infringing domain name in an attempt to benefit from the false impression that Respondent has an affiliation with Complainant. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names and therefore has no rights or legitimate interests in them pursuant to Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent’s use of the <neiman-marcus.org> or <neimanmarcusgroup.info> domain names in connection with an anti-fur and animal rights website falsely places Complainant in the position of appearing to be associated through its famous mark with interests that are critical of the types of goods that Complainant markets. This type of activity on the part of Respondent is designed to and does tarnish Complainant’s mark and is therefore not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 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 <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent is using the disputed domain names to cause Internet user confusion and to attract Internet users to a website that is designed to tarnish Complainant’s mark. Respondent uses the <neimascarcass.org> website to raise funds for the animal rights movement and thus benefits financially from the confusion created through its appropriation of Complainant’s mark in the<neiman-marcus.org> and <neimanmarcusgroup.info> domain names. This behavior evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Nat’l Rifle Ass'n. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names <friendsofnra.com>, <friendsofnra.net>, and <friendsofnra.org> with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Moreover, Respondent’s website features numerous disturbing images including photos of animals being trapped and skinned. Respondent’s website specifically associates Complainant with the gruesome images thereby tarnishing Complainant’s reputation and goodwill. This behavior is directly competitive as it is designed to affect Complainant’s commercial operations. See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). Respondent’s use of the <neiman-marcus.org> and <neimanmarcusgroup.info> domain names in connection with its <neimancarcass.org> domain name is calculated to disrupt Complainant’s business and thus evidences bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).
Thus, 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 the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the domain names <neiman-marcus.org> and <neimanmarcusgroup.info> be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 29, 2003.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page