The Neiman Marcus Group, Inc. and NM
Nevada Trust v. CTSG and Heather Holdridge
Claim Number: FA0403000243503
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.
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, 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., 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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