Limco, Inc. v. Jenkins GMC
Claim Number: FA0207000115082
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”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <limited.biz>, registered with Blueberry Hill Communications.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Linda M. Byrne, Chair; Tyrus R. Atkinson Jr.; and Anne Wallace as Panelists.
These parties were involved in a prior domain name dispute under the STOP regulations, and that decision is Limco, Inc. v. Jenkins GMC, FA 112427 (Nat. Arb. Forum June 27, 2002). This STOP proceeding was resolved in favor of Respondent; on the basis that <limited.biz> is not identical to Complainant’s trademark THE LIMITED. Because of the foregoing holding, the STOP decision did not address the issue of Respondent’s rights or legitimate interests, nor the issue of Respondent’s bad faith. The Rules provide that a UDRP proceeding may be brought subsequent to a STOP action. STOP Policy, Paragraph 4.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 11, 2002; the Forum received a hard copy of the Complaint on July 12, 2002. This proceeding involves the UDRP regulations, which have a different standard of proof than the STOP regulations.
On July 12, 2002, Blueberry Hill Communications confirmed by e-mail to the Forum that the domain name <limited.biz> is registered with Blueberry Hill Communications and that the Respondent is the current registrant of the name. Blueberry Hill Communications has verified that Respondent is bound by the Blueberry Hill Communications 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 July 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 5, 2002 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on August 1, 2002.
Complainant’s and Respondent’s Additional Submissions were timely received and determined to be complete. The Panel has fully considered each of the submissions filed by Complainant and Respondent.
On August 21, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Linda M. Byrne, Chair; Honorable Tyrus R. Atkinson Jr.; and Anne Wallace as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that Respondent’s domain name <limited.biz> is confusingly similar to its trademark THE LIMITED; that Respondent does not have any rights or legitimate interest with respect to the domain name <limited.biz>, and that the domain name was registered and is being used by Respondent in bad faith.
Complainant cites several arguments to support its contentions that Respondent lacks rights in <limited.biz> and that Respondent has registered and used <limited.biz> in bad faith, including: (1) Respondent’s domain name is connected to a website that displays numerous copied logos and slogans; thus, Complainant makes the inference that Respondent has fabricated the purpose behind the domain name and corresponding website; (2) Complainant claims that Respondent’s alleged use of the “Limited” word in connection with a hosting service that dates back to 1997 is a misrepresentation because Respondent’s “root domain name” was not registered until 1999; and (3) Respondent’s alleged purpose for the <limited.biz> domain name as representing “Broadband ADSL Services” is a pretext for passive holding. Complainant’s alleged Internet search reveals only two businesses associated with the “Jenkins GMC” company, neither of which hold an apparent relation to the LIMITED mark.
Complainant maintains that Respondent copied three unrelated ISP and telecommunication companies’ home pages and inserted logos reading “Limited.biz” in place of the owner’s existing logo. Complainant states, “Not only is this merely an after-the-fact attempt to legitimize its registration of the Domain Name, but Respondent’s acts also constitute blatant violation of the Copyright Laws, which certainly further demonstrates Respondent’s bad faith.”
Complainant’s Additional Submission addressed several issues raised in Respondent’s Response, and attached additional exhibits.
Respondent contends that <limited.biz> is a generic term and is not confusingly similar to Complainant’s THE LIMITED mark. Respondent also contends that it has used the term “Limited” in connection with a bona fide offering of services, and that Respondent did not register and use the domain name in bad faith. Respondent states, “Limited.goferbiz [sic] have used the name ‘Limited’ since 1997 to market and describe some of our Internet Services and Packages…and also has substantial common law rights to the mark LIMITED as an Internet Service Provider…”
Respondent’s Additional Submission addressed several issues raised in Complainant’s Complaint and Additional Submission.
Complainant holds rights in THE LIMITED mark, which has been used by Complainant since at least as early as 1963 in connection with its clothing and retail stores. Complainant uses the THE LIMITED mark as both a trade name and to designate Complainant’s stores located throughout the U.S., which offer a variety of items that bear Complainant’s THE LIMITED mark. Complainant owns the domain names <thelimited.net>, <thelimited.com>, <thelimited.org>, and <thelimited.info>.
Complainant holds a variety of registrations with the U.S. Patent and Trademark Office for marks incorporating the LIMITED moniker, including: Reg. No. 1,020,794 registered September 16, 1975 for THE LIMITED; Reg. No. 1,205,525 registered August 17, 1982 for LIMITED EXPRESS; and, Reg. No. 1,492,347 registered June 15, 1988 for LIMITED TOO. Complainant holds a registration for the THE LIMITED mark in the United Kingdom, where Respodent is located (Reg. No. 2,021,168 for THE LIMITED). Complainant also owns European Community Trademark Reg. No. 000325043 for THE LIMITED, and this registration covers several European countries, including the United Kingdom.
Respondent is a United Kingdom business offering domain name registration, e-mail and hosting services. Respondent operates a domain name registration service through which it sells and rents domain name registrations and access. Respondent is not commonly known by the second-level “limited” domain, nor is it commonly referred to by the <limited.biz> domain name. Respondent’s Internet hosting services is called “Gofer Net,” available at <goferbiz.co.uk>.
Respondent received notice of Complainant’s STOP complaint on April 26, 2002, according to the Affidavit of Respondent’s principal, Mr. Marc Newton (Respondent’s Exhibit 14). Respondent received notice of Complainant’s UDRP dispute when it was filed on July 15, 2002. Therefore, as of April 26, 2002, Complainant had informed Respondent that it disputed Respondent’s registration and/or use of the domain name <limited.biz>.
The date on which Respondent began to make use of the name LIMITED is somewhat unclear. Respondent’s evidence of use of the domain name included: 1) the use of LIMITED.BIZ as the headline for several websites (none of which bears a date), and 2) the use of LIMITED.BIZ on a website page that can be reached via a link at <goferbiz.co.uk> or by manually keying the URL http://www.limited.goferbiz.co.uk. The printout for the latter website is dated May 30, 2002. The latter document states, “Limited is Goferbiz’s most popular package introduced in 1997…” However, the Respondent has not submitted any dated documentation that shows Respondent’s actual use of the “Limited” term before May 30, 2002.
After notice of the STOP dispute, Respondent contacted Complainant’s representative and attempted to settle the matter. Respondent and Complainant’s counsel had a telephone conversation on May 9, 2002. Complainant offered to reimburse Respondent for its expenses in connection with the domain name, and Respondent asserted that its expenses totaled 10,000 UK Pounds (approximately $15,000 U.S. Dollars). Respondent later sent Complainant’s counsel documentation to allegedly substantiate its expenses.
Respondent filed a trademark application in the U.K. after the dispute between the parties arose. Respondent’s application was filed May 14, 2002, two weeks after the Complainant’s STOP Complaint was filed.
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.
Identical and/or Confusingly Similar
The Panel concludes that Respondent’s <limited.biz> domain name is confusingly similar to Complainant's THE LIMITED mark. Respondent’s domain name reflects Complainant’s mark in its entirety, emulating it in form and spelling. Respondent’s deletion of the word "THE" and addition of the generic top-level domain “.biz” does not affect the conclusion of the confusing similarity. See Limco, Inc. v. Rarenames, FA 99693 (Nat. Arb. Forum Nov. 27, 2001) (“no question” that domain name <limited.net> is confusingly similar to Limited’s trademark THE LIMITED); The Cold War Museum v. Jampal, FA 96594 (Nat. Arb. Forum Mar. 26, 2001) (“THE COLD WAR MUSEUM” similar to “COLD WAR MUSEUM”); Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
This Panel concludes that the domain name <limited.biz> is confusingly similar to Complainant’s THE LIMITED mark.
Rights or Legitimate Interests
It is the Panel’s conclusion that the Respondent has not presented sufficient evidence that it owns rights or legitimate interests in the domain name <limited.biz> prior to Respondent’s notification of the dispute between the parties. Respondent is not commonly known as “Limited” or “Limited.biz.” All of Respondent’s evidence regarding its use of <limited.biz> was after the date on which Respondent received notification of this dispute. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the Respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the Complainant’s “cease and desist” notice); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).
One member of the Panel has filed a concurring opinion with respect to this element of the UDRP claim, and concludes that Respondent has rights and legitimate interests in <limited.biz>. The majority of the Panel concludes that the Respondent failed to prove rights or legitimate interests in the <limited.biz> domain name prior to Respondent’s receipt of notice of this dispute.
Registration and Use in Bad Faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. The Complainant has not proved that the Respondent was aware of the Complainant’s mark prior to Respondent’s acquisition of the domain name on March 27, 2002. To the contrary, Respondent alleges that it had never heard of Complainant before notification of this dispute. This allegation is believable, given that the Respondent is located in the United Kingdom, and the Complainant’s use of THE LIMITED is in the United States. In view of the many trademarks and trade names that contain the term “Limited,” as set forth in Respondent’s evidence, The LIMITED mark is not a particularly distinctive mark, especially in the U.K. where the Complainant is located. Thus, this case is distinguishable from the cases cited by Complainant involving famous marks. E.g., GUESS? Inc. v. Lee Koon Joo, FA 102949 (Nat. Arb. Forum Jan. 31, 2002).
Complainant asserts several bases for finding bad faith by Respondent: 1) Respondent’s request for an excessive amount of money to transfer the domain name, 2) Respondent’s registration of other domain names containing the trademarks of third parties, 3) Respondent’s infringement of the copyright of third parties, and 4) Respondent’s untruthful statements and evidence. Each of these issues is addressed in turn below.
Bad faith is sometimes found in situations where the domain name owner will transfer the domain name only for an amount that is in excess to the domain name holder’s out-of-pocket expenses. See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name); Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs).
In this situation, however, there are mitigating factors that outweigh the Respondent’s offer to transfer the domain name if it were compensated for its expenses of approximately $15,000. These factors are that Respondent’s $15,000 offer was only in response to statements of Complainant’s counsel to the effect that Complainant “would be interested in buying the name.” In addition, Respondent made an offer to insert a disclaimer and hyperlink to Complainant’s website free of charge. The Panel concludes, on balance, that the discussions of a transfer price between the parties are not sufficient evidence of bad faith. Cf. National Association for Stock Car Auto Racing, Inc. v. Shacklette, D2001-1350, 202 WL 373017 (WIPO Feb. 4, 2002). (Respondent’s asserted expenses of $27,000 held insufficient to constitute bad faith, but bad faith was found on the basis that Respondent used Complainant’s trademark to divert traffic to its website); see also Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of trademark for an amount in excess of out-of-pocket expenses); see also Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase it from Respondent); see also Etam, plc v. Alberta Hot Rods, D2000-1654 (WIPO Jan. 31, 2001) ("Respondent’s offer to sell the domain name does not constitute bad faith, in light of the fact that it has a legitimate interest in the domain name").
Complainant also asserts that Respondent’s bad faith is shown by the fact that Respondent registered but did not hold any rights in several domain names that contain trademarks owned by third parties. Complainant’s examples of these are: THE GRAMMYS, WHSMITH, THE OSCARS, DAWSON’S CREEK, FANTASY ISLAND, BILBO BAGGINS and LORD OF THE RINGS. Respondent replies that the above registrations were at the request of the rightful trademark owners, and that Respondent registered these domain names as part of its normal business of securing domain name registrations for its clients. Significantly, Respondent has not been the defendant in any other domain name dispute. This Panel concludes that the Complainant has not attempted to prove (as distinct from allege) that the Respondent has engaged in a pattern of registering domain names with the intention of selling them to the trademark owners for a sum greater than out-of-pocket costs directly related to the domain name.
Complainant has also argued that Registrant’s bad faith is demonstrated by Respondent’s infringement of the copyright of third parties. This Panel does not reach the issue of whether copyright infringement occurred, because the Panel does not know whether the alleged copyrighted material is subject to copyright protection or in the public domain, whether the circumstances may warrant a finding of fair use, whether there is the substantial similarity required for a finding of copyright infringement, and whether there is an implied copyright license between Respondent and the copyright owner. Because this forum is unable to reach these issues, the Panel chooses not to find bad faith on this basis. See Perry v. Ely, FA 94863 (Nat. Arb. Forum Sept. 19, 2000) (“the registration of a domain name replicating an existing copyright or trademark, standing alone, is not conclusive evidence of bad faith”).
Moreover, Respondent has asserted that its “proposed ADSL web site is not a fabrication but is currently under development…[and Respondent] has been in talks with Plusnet amongst many other leading ADSL backbone providers and resellers to resell their Broadband packages in conjunction with our own services…[T]his is a common and accepted practice within the IT industry.” (Respondent’s Response, Section 3[c]vii. This statement indicates that there may be an implied license between the copyright owner, Plusnet, and Respondent.
Finally, Complainant asserts that Respondent has manufactured evidence and has engaged in arguments that have no factual basis. For example, Complainant argues that Respondent could not have been using “Limited” since 1997, because Respondent’s domain name, <goferbiz.co.uk>, was not registered until 1999. In reply, Respondent argues that its pre-1999 use of “Limited” was via a different URL than www.goferbiz.co.uk.
Respondent also maintains that its proposed Broadband Internet website is not a fabrication, but is currently under development. Respondent has been in talks with providers in order to purchase Broadband packages that it can offer in combination with its other Internet related services. Even if Respondent’s use of “Limited” is not legitimate, this Panel finds that five months (i.e., since March 27, 2002) is a reasonable amount of time to research and develop a proposed website. See Meredith Corp. v. City Home, Inc., D2000-0223 (WIPO May 18, 2000) (non-use of domain name for eight months is reasonable time to engage in research and development); see also Mondich and Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (finding Respondent cannot be said to lack a bona fide intent to use the domain name when only 10 months have passed since registration). [Cf. Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under STOP Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).]
In reaching the conclusion that there is insufficient evidence for a finding of bad faith, the Panel is cognizant of the fact that, by its nature, the ICANN Rules do not provide for discovery, or absent extraordinary circumstances, live testimony at which credibility can be evaluated. Although the evidence presented is insufficient to support a showing of bad faith, it is possible that a nefarious motive could be proven through discovery, where the opportunity to review documents and cross-examine witnesses provides greater opportunities for a thorough search for the truth.
The evidence does not support a finding that the Respondent registered and is using the domain name in bad faith for the following reasons:
1. There is no evidence that Respondent registered the name for the purpose of selling it to Complainant or a competitor. Although Respondent responded to Complainant’s request for an itemization of expenses with a $15,000 price tag, Respondent did not initiate the negotiations, did not pursue the negotiations it submitted its statement of expenses, and offered to insert a free disclaimer and link to Complainant’s website on Respondent’s <limited.biz> site.
2. There is no evidence that Respondent registered the domain name in order to prevent Complainant from using its trademark in a corresponding .biz domain name. Although Respondent owns other domain names that could be construed as trademarks owned by third parties, Respondent’s explanation that these domain names were registered on behalf of Respondent’s clients is persuasive, especially in the view of the fact that Respondent operates a domain name registration service.
3. There is no evidence that the Respondent is attempting to attract for commercial gain Internet users to Respondent’s website by creating confusion with Complainant’s mark.
4. There is no evidence that Complainant and Respondent are competitors; there is no evidence of any attempt by Respondent to attract Internet users to a website through confusion with the Complainant’s marks, and there is no evidence of a pattern of registering domain names in order to prevent an owner of a mark from reflecting its mark in a domain name.
In view of Complainant’s failure to establish the element of bad faith under the ICANN policy, the Panel concludes that the requested transfer of the domain name should be denied.
It is the decision of this Panel that the domain name at issue, <limited.biz>, not be transferred from Respondent to Complainant.
Linda M. Byrne, Chair Panelist
Tyrus R. Atkinson Jr., Panelist
Anne Wallace, Panelist
Dated: September 4, 2002
I concur with the other Panelists with respect to the first and third elements of this case and with respect to the outcome; i.e. refusal to transfer the domain name from Respondent to Complainant. However, I wish to make some additional comments with respect to the issue of rights or legitimate interests. Policy 4(c) sets out three circumstances which, if found by the Panel, “shall demonstrate your rights or legitimate interests to the domain name”. The three cited examples are situations where, if the evidence exists, the Panel must find rights or legitimate interests. This does not, however, preclude the Panel finding that other circumstances amount to rights or legitimate interests in a particular case. The paragraph says, "in particular but without limitation".
I agree with the other members of the panel that Respondent has not demonstrated rights or legitimate interests in the domain name through evidence to establish one of the three circumstances listed in Policy 4(c).
I believe, however, that there are other circumstances which demonstrate Respondent has a legitimate interest in the domain name in this case and which circumstances the Panel should have considered. Respondent decided to use the word LIMITED in the promotion of his business interests. LIMITED is a generic word. It is not the same thing as THE LIMITED which is Complainant’s mark. LIMITED is used as part of thousands of trademarks and corporate names throughout the world. Respondent’s explanation for the use of the word LIMITED, given the nature of his business, also makes some logical sense. Respondent has not tried to take Complainant's mark and capitalize on it, but rather is just using a common word that is used in the names of thousands of corporations around the world. In this sense, Respondent has legitimate interests in the use of the word LIMITED. I would therefore find for Respondent on the second element as well.
Anne Wallace, Panelist
Dated: September 4, 2002
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