DECISION

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 <neimanskills.com> and <neimanskills.org>, 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 <neimanskills.com> and <neimanskills.org> 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 postmaster@neimanskills.com and postmaster@neimanskills.org 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. Respondent’s <neimanskills.com> and <neimanskills.org> domain names are confusingly similar to Complainant’s NEIMAN MARCUS and NEIMANS marks.

2. Respondent does not have any rights or legitimate interests in the <neimanskills.com> and <neimanskills.org> domain names.

3. Respondent registered and used the <neimanskills.com> and <neimanskills.org> 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.  Complainant’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 <neimanmarcus.com> website in conjunction with its business. 

Complainant claims that it has established common law rights in the NEIMANS mark through Complainant’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 <google.com> search engine, the first listed hit is a link to Complainant’s <neimanmarcus.com> website.  Further proof of Complainant’s secondary meaning in the NEIMANS mark is evidenced in Exhibit E of the Complaint which shows that Respondent’s disputed domain names link to the <caft.org> website which criticizes Complainant and refers to boycotting NEIMANS. 

Respondent registered the <neimanskills.com> and <neimanskills.org> domain names on August 29, 2001.  Respondent uses the disputed domain names to misdirect Internet users searching for Complainant’s <neimanmarcus.com> website to Respondent’s <neimancarcass.org> website.  Respondent’s <neimancarcass.org> 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 Complainant’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 Int’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).

Respondent’s <neimanskills.com> and <neimanskills.org> domain names are confusingly similar to Complainant’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 Complainant’s mark); see also Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding the domain name <vivendiuniversalsucks.com> 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).

Respondent’s omission of the MARCUS portion of Complainant’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 <leafs.org> is confusingly similar to Complainant’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 <bodyshopdigital.com> is confusingly similar to Complainant’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 Complainant’s marks.  The WHOIS information for the <neimanskills.com> and <neimanskills.org> 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, Respondent’s use of the <neimanskills.com> and <neimanskills.org> 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.  Respondent’s domain names make it likely that Internet users entering “Neiman” or "Neimans" into a search engine will find the <neimanskills.com> and <neimanskills.org> websites when searching for Complainant’s <neimanmarcus.com> website.  Respondent’s domain names are sufficiently similar to Complainant’s marks such that the search engine results might confusingly list Respondent’s domain names when searching for Complainant’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 <davidweekleyhome.com> 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 Cabela’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 <cabelas.com> was entitled to relief under UDRP against Respondent for the bad faith registration and use of the domain name <cabelassucks.com> because “by using Complainant’s marks in its domain names, Respondent makes it likely that Internet users entering "Cabela’s" into a search engine will find <cabelassucks.com> in addition to Complainant’s site <cabelas.com>. Respondent’s domain name is sufficiently similar to Complainant’s marks that the search engine results will confusingly list Respondent’s domain name when searching for Complainant’s mark).

Internet users may also be deceived by Respondent’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 Complainant’s skills. 

Furthermore, due to Respondent’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 Respondents’ 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 Complainant’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 Complainant’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 Complainant’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").

Respondent’s use of the <neimanskills.com> and <neimanskills.org> domain names constitutes bad faith because the domain names might misdirect Internet users searching for Complainant’s <neimanmarcus.com> website to Respondent’s <neimancarcass.org> website which criticizes Complainant.  Respondent’s diversionary tactic may cause Internet user confusion as to whether the disputed domain names or the <neimancarcass.com> website are endorsed by or affiliated with Complainant.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although Respondent’s complaint website did not compete with Complainant or earn commercial gain, Respondent’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 owner’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. Respondent’s conduct is not the equivalent of exercising the right of free speech outside Complainant’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 <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where Respondent published negative comments regarding Complainant’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 <neimanskills.com> and <neimanskills.org> domain names be TRANSFERRED from Respondent to Complainant, The Neiman Marcus Group, Inc.

Sandra Franklin, Panelist

Dated:  October 7, 2003

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