DECISION

The Neiman Marcus Group, Inc. and NM Nevada Trust v. CTSG and Heather Holdridge

Claim Number: FA0403000243503

PARTIES

Complainant is The Neiman Marcus Group, Inc. and NM Nevada Trust (collectively, “Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660. Respondent is CTSG and Heather Holdridge (“Respondent”) represented by Alice Hendricks, 1718 Connecticut Ave. NW, 6th Floor, Washington, DC 20009.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <neimancarcass.com>, <neimancarcass.net>, and <neimancarcass.org>, registered with Bulkregister, LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 2, 2004; the Forum received a hard copy of the Complaint on March 3, 2004.

On March 3, 2004, Bulkregister, LLC. confirmed by e-mail to the Forum that the domain names <neimancarcass.com>, <neimancarcass.net>, and <neimancarcass.org> are registered with Bulkregister, LLC. and that Respondent is the current registrant of the name.  Bulkregister, LLC. has verified that Respondent is bound by the Bulkregister, LLC. 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 March 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 24, 2004 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@neimancarcass.com, postmaster@neimancarass.net, and postmaster@neimancarcass.org by e-mail.

A timely Response was received and determined to be complete on March 22, 2004.

On April 1, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Respondent challenged whether Respondent is the proper Respondent.  The Panel concluded that Respondent is the proper Respondent and allowed Respondent additional time to respond to the Complaint on the merits and allowed Complainant time to reply to any Response.

Respondent submitted an Additional Submission on April 19, 2004.  Complainant submitted an Additional Submission on April 26, 2004.  The Panel has considered each of these submissions.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.  Respondent requests that the Panel dismiss the Complaint as the proper owner of the domain names is not a party to this proceeding.  Respondent requests that the request to transfer the domain names be denied.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, The Neiman Marcus Group, Inc. and NM Nevada Trust, contends that the disputed domain names, <neimancarcass.com>, <neimancarcass.net>, and <neimancarcass.org>, are confusingly similar to Complainant’s NEIMAN MARCUS trademark.  Respondent, CTSG and Heather Holdridge, has registered domain names that are deliberately confusingly similar to Complainant’s famous marks. The subject domain names are identical to Complainant’s Neiman Marcus trademarks and <neimanmarcus.com> domain name except for the replacement of the letters “m” and “u” in “Marcus” with the letters “c” and “a,” and the addition of an extra “s.”  The domain names are confusingly similar both visually and aurally to Complainant’s marks.  Respondent has misappropriated a sufficient textual component of the Neiman Marcus trademarks to cause confusion.

Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is using domain names confusingly similar to Complainant’s NEIMAN MARCUS mark for commercial purposes, which does not qualify as a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Evidence of Respondent’s commercial purposes can be seen in the numerous links to organizations working in concert with Respondent that sell merchandise, including clothing, as well as Respondent’s requests for financial support.  Further, Respondent’s intent is to misleadingly divert consumers and to tarnish Complainant’s marks and harm Complainant’s business.

Complainant also argues that Respondent’s use of the disputed domain names is unlawful under U.S. law because the use is highly dilutive of the NEIMAN MARCUS mark as defined by 15 U.S.C. § 1125(c).

Complainant alleges that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its online location by creating a likelihood of confusion with Complainant’s NEIMAN MARCUS mark.  Respondent uses the disputed domain names for commercial gain by facilitating donations and the purchase of clothing on other linked websites.

B.             Respondent

Respondent contends that it does not own <neimancarcass.com>, <neimancarcass.net>, or <neimancarcass.org>.  Because Respondent is not the owner of the disputed domain names, Complainant has entered into arbitration against an incorrect third party and the Complaint should have been brought against the correct owner, The Fund for Animals (“FFA”).  Since the registrar shows that FFA possesses the disputed domain names in its account, FFA is the domain name holder.  Because FFA is the domain name holder, FFA is the proper party to respond to a Complaint regarding the domain names <neimancarcass.com>, <neimancarcass.net>, and <neimancarcass.org>. 

C.             Additional Submissions

           

Respondent

Respondent contends that <neimancarcass.com>, <neimancarcass.org>, and <neimancarcass.net> are parodies of Complainant’s trademark and, as such, are not confusingly similar.  Respondent has rights and legitimate interests in the domain names as parody and criticism.  Respondent is making a noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii) by hosting a website that does not offer goods or services for sale.  The domain names have not been registered or used in bad faith.  As parody, FFA has not created a likelihood of confusion between Complainant’s mark and the disputed domain names.  Because of its social criticism and rights to the disputed domain names under the First Amendment, the same facts that show fair use and exercise of free speech negate a finding of bad faith. 

             Complainant

Respondent cannot refute that the subject domain names are confusingly similar to Complainant’s famous trademarks.

 

Respondent is using the domain names to trade commercially on the goodwill of the NEIMAN MARCUS trademark to sell goods, including goods competitive with Neiman Marcus.  Respondent’s own websites, which link to the subject domain names, are commercial in nature, and have links to other organizations working in close concert whose websites are also commercial in nature, all offering goods in competition with or disparaging Complainant’s goods and inciting consumers not to purchase from Complainant, and whose sole and stated purpose is to tarnish Complainant’s famous marks and harm its business.

The commercial nature of Respondent’s websites renders the subject domain names ineligible for any “parody” or “critical comment” exception to the Policy.

 

Respondents are trading on that wide recognition of the NEIMAN MARCUS trademark by using the subject domain names to buy and sell competitive goods.  Respondent’s assertion that parody removes likelihood of confusion must fail because consumers receive no environmental cues to the parody until after they have been misdirected.  Consumers searching the Internet for Complainant are not aware, nor would they necessarily quickly discern that the subject domain names are supposed to be a parody, and are instead misdirected to Respondent’s websites with little, if any, warning.

           

FINDINGS

NM Nevada Trust owns and licenses to The Neiman Marcus Group, Inc. the Neiman Marcus trade name and NEIMAN MARCUS trademark, which is the subject of numerous United States trademark registrations. Complainant’s Neiman Marcus retail business was established in 1907 as a local specialty store in Dallas, Texas and over the decades has grown into a nationwide chain of retail stores and a worldwide mail order catalog retail business, internationally recognized as an innovator in high-end fashion and merchandising.  Complainant has developed a reputation for high-quality goods and services, and the Neiman Marcus name has become synonymous with high-fashion retailing. 

Complainant owns numerous United States trademark registrations of its marks NEIMAN-MARCUS and NEIMAN MARCUS (the “Neiman Marcus Trademarks”).  Since 1907, Complainant and its predecessors have continuously and exclusively used the Neiman Marcus trademarks in the United States and around the world.

As a result of nearly a century of use, Complainant has created in NEIMAN MARCUS one of the most famous and distinctive marks in retailing. The Neiman Marcus trademarks have acquired a valuable goodwill and reputation, not only in the United States but throughout the world. Complainant now operates thirty-five NEIMAN MARCUS stores located in premier retailing locations in major markets nationwide. Hundreds of thousands of consumers hold Neiman Marcus charge accounts, and sales revenues for the Neiman Marcus stores and mail order catalogs are in excess of one billion dollars annually.  In the Fall of 1999, Complainant expanded its retailing business by launching an e‑commerce website at <neimanmarcus.com>.

Respondent, the Carol/Trevelyan Strategy Group (CTSG), is a web-hosting company which has maintained a professional relationship since March 27, 2000 with The Fund for Animals (FFA), a non-profit animal protection agency.  Throughout this relationship, CTSG has designed and maintained FFA’s home page at the domain name <fund.org> and has hosted the disputed domain names on behalf of the FFA since September 19, 2003.

The Fund for Animals is an animal protection organization that has campaigned against abuse endured by wildlife, including fur-bearing animals, since 1967.  The disputed domain names use social commentary and parody to educate and raise awareness regarding issues pertaining to wildlife.   

Since 1993, CTSG has worked to pioneer new tools and techniques for engaging citizens and influencing public policy.  CTSG's team works with its clients and partners to integrate online and offline strategies and tools to build membership, affinity, relationships, and impact for effective advocacy strategies.  CTSG seeks to partner with the client to reach their goals - whether it's to advocate on an issue, engage a new audience, or better serve an existing membership base. Among the many services CTSG offers are website design and development and content management systems.  Heather Holdridge is an employee of CTSG. 

As a service provider of website design and development and content management, Respondent does not own most, if any, of the websites it designs or hosts.  It merely provides a service to its customers who are the actual owners, although not holders, of the domain names.  In the case of <neimancarcass.com>, <neimancarcass.net>, and <neimancarcass.org>, Respondent is not the owner of these domain names but maintains and hosts them for The Fund for Animals.  However Respondent is the registered holder of these domain names. 

On or around September 12, 2003, FFA authorized CTSG to register the three domain names in dispute.  The <neimancarcass.net> and <neimancarcass.org> domain names merely direct traffic to the <neimancarcass.com> website and have no content of their own. 

On or around September 19, 2003, the domain names were transferred from CTSG’s Bulkregister, LLC. account into The Fund for Animals’ Bulkregister, LLC. account.  Although the three disputed domain names are owned by The Fund for Animals, CTSG remains the holder of the domain names under the Policy.

Respondent uses the disputed domain names as parody in order to comment on the practices it finds objectionable. 

The subject domain names route consumers to websites containing commercial merchandise and which solicit donations, including Respondent’s own website at <fund.org>.  From web pages directly reached from these websites, Respondent sells goods that compete with goods Neiman Marcus sells, including men’s and women’s apparel, plush animal toys, writing pens, coffee cups, and Christmas ornaments.  At least one of the goods sold by Respondent, a girl’s T-shirt, actually displays the phrase “Neiman Carcass” essentially as a designer brand and prominently features the <neimancarcass.com> domain name. 

Respondent’s website at <neimancarcass.com> contains critical commentary and remarks about Complainant. This site also refers individuals, via hyperlinks, to Internet sites maintained by other organizations that contain information critical of, and contrary to, the interests of Complainant. 

Respondent admits reliance on the fact that the NEIMAN MARCUS trademark is well established and widely recognized by consumers in choosing and registering these domain names and developing their web content.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Preliminary Procedural Matter (Determination of Properly Named Party)

Respondents, CTSG and Heather Holdridge, contend that Complainant has named an incorrect party according to the Policy.  Respondent CTSG states that it is a service provider of website design and development and content management, and that Respondent does not own most, if any, of the websites it designs or hosts.  Respondent merely provides a service to its customers who are the actual owners of the domain names.  In the case of the disputed domain names, Respondent is not the owner of these domain names but maintains and hosts them for The Fund for Animals.  

Although Respondent states in its Response that “the bulkregister shows that FFA possesses the disputed domain names in its account, [and therefore] FFA is the domain name holder,” the WHOIS information lists Respondent CTSG and Heather Holdridge as the registrants of the disputed domain names.  As a result, Respondent is bound by the Bulkregister, LLC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Policy.

Respondents are the properly named Respondents in this dispute. UDRP Rule 1 defines a “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.”  The WHOIS information determines the identity of the holder of the domain registration.  In this case, Respondent CTSG is listed in the WHOIS information for all three disputed domain name registrations and Respondent Heather Holdridge is listed in the WHOIS information for <neimancarcass.org>.  Therefore, Complainant has named the proper Respondents. 

Identical and/or Confusingly Similar

Complainant has rights in the NEIMAN MARCUS mark as a result of its multiple registrations with the U.S. Patent and Trademark Office (“USPTO”) including registration numbers 0934177 (registered May 16, 1972), 1593195 (registered Apr. 24, 1990), and 1733202 (registered Nov. 17, 1992).  Since 1907, Complainant and its predecessors have continuously and exclusively used the NEIMAN MARCUS mark in commerce  in connection with its retail stores. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).  In the Fall of 1999, Complainant began operating its retail business online at the <neimanmarcus.com> domain name.

The disputed domain names are not confusingly similar to Complainant’s NEIMAN MARCUS mark because the domain names add the word “carcass,” which communicates to Internet users that the domain names do not belong to Complainant.  As a panel has said, “[t]rademark owners, indeed, are highly unlikely to disparage or parody their own goods or services.” Berlitz Investment Corp. v. Tinculescu, D2003-0465 (WIPO Aug. 22, 2003).  The addition of the word “carcass” to Complainant’s mark can be analogized to those cases where domain names contain the word “sucks” appended to a mark. Cf. Wal-Mart Stores, Inc. v. Wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (concluding that a domain name including the word 'sucks' cannot be confusingly similar, and that a privilege for criticism and parody reinforces that conclusion); E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (suggesting in dicta that the addition of sucks or other identifier to a famous mark would be sufficient to defeat a claim that the domain name is confusingly similar); Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (noting that using a negative domain name for the purposes of criticism, such as <walmartcanadasucks.com>, does not create confusion with the service mark of Complainant); Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001) (finding that “common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or other language clearly indicates that the domain name is not affiliated with the trademark owner and therefore <lockheedmartinsucks.com> and <lockheedsucks.com> cannot be considered confusingly similar to LOCKHEED MARTIN).

Likewise, the Panel finds that the disputed domain names are not confusingly similar to Complainant’s NEIMAN MARCUS mark because Respondent has merely appended a term that is critical of Complainant’s goods and services offered under the mark. See Berlitz Investment Corp. v. Tinculescu, D2003-0465 (WIPO Aug. 22, 2003) (stating, “Numerous previous panels have concluded that appending a critical term (such as 'sucks') to a trademark in a domain name automatically signals that the corresponding website is intended for parody or criticism, and eliminates any significant risk that the public will be confused into believing that the trademark owner owns or is affiliated with the domain name.”); see also Royal Bank of Scotland Group v. natwestfraud.com, D2001-0212 (WIPO June 18, 2001) (finding that <natwestfraud.com> was not confusingly similar to Complainant’s NATWEST mark because the term “fraud” is a common English term with a pejorative meaning and therefore, distinguishes the domain name from Complainant’s mark); see also Talk Radio Network, Inc. v. Leavitt, FA 155182 (Nat. Arb. Forum June 24, 2003) (finding that the <savagestupidity.com> domain name was not confusingly similar to Complainant’s SAVAGE mark because the disputed domain name includes the term “stupidity” after Complainant’s mark. “Internet users would not confuse Respondent’s domain name with Complainant’s mark because the addition of the term ‘stupidity’ indicates that the disputed domain name has no affiliation with Complainant’s mark.”); see also Taubman Co. v. Webfeats, [2003] USCA6 49; 319 F.3d 770, 778 (6th Cir. 2003) (finding that <taubmansucks.com> removes any confusion as to source).

The disputed domain names, <neimancarcass.com>, <neimancarcass.net> and <neimancarcass.org>, although sounding similar to Neiman Marcus, and conjuring the name “Neiman-Marcus,” are clearly different and a parody of the store’s name by        replacing “marcus” with “carcass.”  Replacing the “m” and “u” with “c” and “a” and adding an additional “s” on the end creates a whole new word in “carcass,” with a different definition, and conjures an image of the dead body of an animal.  This is exactly the image FFA wishes to conjure up in the mind of its audience as it is opposed to the sale and wearing of fur, which is a product Neiman Marcus sells.  See Federal Express v. Federal Expresso, Inc., 1998 WL 690903 (N.D.N.Y. 1998) aff’d, Federal Express v. Federal Expresso, Inc., et. Al., [2000] USCA2 3; 201 F. 3d 168 (2d. Cir. 2000) (even though the court found no parody, it found no likelihood of confusion as requested by Federal Express, even though the “express” and “expresso” only differ by two letters – holding that the difference in the two letters was crucial because it resulted in an entirely different word with its own distinct meaning).  Furthermore, changing these three letters makes it unlikely that someone who is legitimately looking for Neiman-Marcus website or products on the web would mistakenly find Respondent’s website.  In light of the domain name coupled with the content of the website, it is unreasonable to believe that a reasonable consumer would be confused as to what the website is about or whether it is owned, sponsored or affiliated with Complainant.  Anyone who finds themselves at <neimancarcass.com>, through any use of the disputed domain names, would quickly understand that the disputed domain names or the web content to which they direct their audience are not affiliated or endorsed by Complainant and in fact are critical of Neiman Marcus insofar as it is involved in the sale of fur.

Respondent has not used Complainant’s entire mark and has sufficiently distinguished the domain names from Complainant’s mark by adding the term “carcass,” an obvious deviation from Complainant’s mark. See also Spence-Chapin Servs. v. Wynman, FA 100492 (Nat. Arb. Forum Dec. 10, 2001) (“Various panels have assessed the suitability of a contested domain name as an address for a complaint site as hinging on whether that name included, not only a complainant's mark or name, but also and in addition a 'communicative element', such as 'sucks' or other pejorative term.”); see also Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C. D. Cal. 1998) (finding that the registrant of the <ballysucks.com> domain name had a legitimate interest in the name because the inclusion of the pejorative element “sucks” would lead “reasonably prudent” Internet users to believe that the domain name was not the official website of Complainant).

The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.  Because Complainant has not proven the first element, it is not necessary to consider the “rights or legitimate interests” and “registration and use in bad faith” elements.

                 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be DENIED.

Accordingly, it is Ordered that Complainant’s Complaint be DISMISSED.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 14, 2004

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