Limco, Inc. v. Jenkins GMC
Claim Number: FA0204000112427
PARTIES
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.
A. 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.
B. Respondent
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.
DECISION
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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