Limco, Inc. v. Jenkins GMC
Claim Number: FA0204000112427
Complainant is Limco, Inc., Wilmington, DE, USA (“Complainant”) represented by Melise R. Blakeslee, of McDermott Will & Emery. Respondent is Jenkins GMC, Sutton Coldfield, UNITED KINGDOM (“Respondent”).
The domain name at issue is <limited.biz>, registered with Blueberry Hill Communications, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C., as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 27, 2002.
On May 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 20, 2002.
Complainant’s Additional Submission was timely received and determined to be complete on May 28, 2002. Respondent’s Additional Submission was timely received and determined to be complete on May 30, 2002.
On June 17, 2002, pursuant to STOP Rule 6(b), the Forum appointed Anne M. Wallace, Q.C., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant is the owner of registered trademarks for THE LIMITED, LIMITED EXPRESS, LIMITED TOO, LIMITED SPORT USA, LIMITED AMERICA, LIMITED JEANS, and THE LIMITED AMERICA. Complainant owns the registered domain name <limited.com>. Complainant also claims common law trademark rights in the word LIMITED.
Respondent has registered the domain name <limited.biz>.
Complainant claims that <limited.biz> is identical to its trademark THE LIMITED and its common law trademark LIMITED. Complainant argues that the addition of the word “the” makes no difference in distinguishing its trademark THE LIMITED from the generic word LIMITED.
I light of my findings below, I need not further summarize Complainant’s submissions.
Respondent has used the name limited.goferbiz in its business since 1997. The word LIMITED is a generic word and is incorporated in more than 1290 United States trademarks. Some two million companies in the United Kingdom incorporate the word LIMITED in their name. The omission of the word THE does make a significant difference and effect as it clearly distinguishes Complainant’s mark from the many other trademark holders who incorporate the word LIMITED in their names.
In light of my findings below, I need not further summarize Respondent’s submissions.
C. Additional Submissions
Both Complainant and Respondent filed additional submissions. I have reviewed those submissions.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be considered when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
This Complaint fails to meet the first element of the STOP Policy. While I am mindful that other decisions (see, for example. Commercial Investors Realty v. Bank of New York, FA 103040 (Nat. Arb. Forum Feb. 18, 2002)) have found the word THE to be inconsequential when determining whether or not a domain name is identical, I cannot agree with that assertion in this case. Complainant has not demonstrated common law rights in the term LIMITED. The evidence establishes Complainant has rights in marks including THE LIMITED and other marks outlined above. The word LIMITED itself is a generic word that is used by millions of businesses throughout the world as part of their names and trademarks. Respondent has not merely taken away the word THE from someone else’s registered trademark. In fact, it is the addition of the word THE to the generic word LIMITED that gives Complainant’s trademark its unique quality. The word THE in this situation clearly distinguishes Complainant’s mark THE LIMITED from the generic word LIMITED. Respondent has registered the generic word LIMITED with a .biz extension. The domain name is not identical to Complainant’s mark, but clearly distinguishable. That being the case, this Complaint does not meet the first element required by the STOP Policy.
I find that the domain name <limited.biz> is not identical to a trademark or service mark in which the Complainant has rights. The Complaint is therefore dismissed. No further IP claims are pending against this domain name under the STOP Policy.
Anne M. Wallace, Q.C., Panelist
Dated: June 27, 2002
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