national
arbitration forum
DECISION
Tween Brands Investment LLC v. Anthony Reisdorff
Claim Number: FA0802001153608
PARTIES
Complainant is Tween Brands Investment LLC (“Complainant”), represented by Melanie
R. Martin-Jones, of Porter Wright Morris & Arthur LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <limitedtoo.mobi>, registered with 1&1 Internet AG.
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 electronically on February 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2008.
On March 5, 2008, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <limitedtoo.mobi> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 2008 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@limitedtoo.mobi by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <limitedtoo.mobi> domain name is identical to Complainant’s LIMITED TOO mark.
2. Respondent does not have any rights or legitimate interests in the <limitedtoo.mobi> domain name.
3. Respondent registered and used the <limitedtoo.mobi> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Tween Brands Investment, LLC, is a retailer of girls’ clothing and accessories, which it sells at its retail stores and through its website, <www.limitedtoo.com>. Complainant registered the LIMITED TOO mark with the United States Patent and Trademark Office (“USPTO”) on June 14, 1988 (Reg. No. 1,492,347). Complainant has used the mark to promote its products since 1987.
Respondent registered the <limitedtoo.mobi> domain name on October 11, 2006. The disputed domain name resolves to a default site that has content provided by the registrar, 1&1 Internet AG, including the notice: THIS DOMAIN NAME HAS JUST BEEN REGISTERED FOR ONE OF OUR CUSTOMERS.
DISCUSSION
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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
Complainant has established rights in the LIMITED TOO mark
for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also
Complainant contends that
Respondent’s <limitedtoo.mobi>
domain name is identical to its LIMITED TOO mark. The <limitedtoo.mobi> domain name differs from Complainant’s mark in
two ways: (1) the space between the terms has been removed; and (2) the generic
top-level domain (“gTLD”) “.mobi” has been added. The Panel finds that these changes are
irrelevant to the analysis of the identicality of the Complainant’s mark and
the disputed domain name, and so Respondent’s disputed domain name is not
sufficiently distinguished from Complainant’s mark pursuant to Policy ¶
4(a)(i). See Little Six, Inc. v. Domain For
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant contends that Respondent lacks all rights and legitimate interests in the <limitedtoo.mobi> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”)
Complainant contends that Respondent is not commonly known
by the disputed domain name, <limitedtoo.mobi>, nor have they ever been the
owner or licensee of the LIMITED TOO mark.
The WHOIS record for the disputed domain name lists the Respondent as
“Anthony Reisdorff.” This evidence,
along with the fact that Respondent has failed to show any evidence contrary to
Complainant’s contentions, compels the Panel to find that Respondent is not
commonly known as <limitedtoo.mobi> pursuant to Policy ¶
4(c)(ii). See Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Respondent is not making any active use of the disputed domain name, <limitedtoo.mobi>. The Panel finds that Respondent’s non-use of the domain name <limitedtoo.mobi> is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant contends that Respondent is using the disputed
domain name to divert internet customers from Complainant’s website through the
confusion caused by the similarity between the LIMITED TOO mark and the <limitedtoo.mobi>
domain name, especially since the target customers, young girls, are frequent
users of cell phones, and the gTLD “.mobi” is specifically designated for use
in delivering Internet content to users of mobile phones. The Panel finds that, under the totality of
the circumstances, Respondent’s use of the disputed domain name disrupts
Complainant’s business, and is evidence of registration and use in bad faith
pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <limitedtoo.mobi> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 4, 2008
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