LIMITED STORES, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1303001491426
Complainant is LIMITED STORES, LLC (“Complainant”), Ohio, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwthelimited.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2013; the National Arbitration Forum received payment on March 25, 2013.
On March 26, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <wwwthelimited.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wwwthelimited.com. Also on March 27, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Respondent has not been commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent is a serial cybersquatter and has repeatedly registered domain names containing names of famous persons or trademarks of other entities in order to capitalize on the goodwill developed by others.
ii. Respondent has caused the website reachable by the disputed domain name to display the products of Complainant and their competitors.
iii. By registration of the <wwwthelimited.com>, Respondent has demonstrated a thorough knowledge of the THE LIMITED brand and business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a successful and well-known United States company engaged in the retail and related industries and has a strong physical and Internet presence through its 257 mall locations and its website at <www.thelimited.com>.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the THE LIMITED mark (e.g., Reg. No. 1,068,927, registered September 16, 1975).
3. Respondent registered the <wwwthelimited.com> domain name December 7, 2003. It resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
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."
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.
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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant, LIMITED STORES, LLC, contends that it has a strong physical and Internet presence through its 257 mall locations, in the United States, and website at <www.thelimited.com>. Complainant argues that it is the owner of trademark registrations with the USPTO for the THE LIMITED mark (e.g., Reg. No. 1,068,927, registered September 16, 1975). See Complainant’s Exhibit A. Although Respondent appears to reside in Saint Vincent and the Grenadines, the Panel finds that Complainant does not need to register its mark in the country in which Respondent operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Thus, the Panel holds that Complainant’s registration of the THE LIMITED mark with the USPTO demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the THE LIMITED mark. Complainant asserts that Respondent’s <wwwthelimited.com> domain name is identical or confusingly similar to Complainant’s mark because it consists of Complainant’s properly spelled mark, “THE LIMITED,” prefaced with “www.” The Panel finds that the addition of “www” does not negate confusing similarity under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name and removes the space in Complainant’s THE LIMITED mark. The Panel finds that the addition of a gTLD and the removal of spaces does not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel concludes that Respondent’s <wwwthelimited.com> domain name is confusingly similar to Complainant’s THE LIMITED mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s THE LIMITED trademark and to use it in its domain name, adding only the letters “www” without a period between those letters and the remainder of the domain name, thus giving the false impression that the domain name is an internet address using an official domain name of Complainant and that it will lead to an official website of Complainant;
(b) Respondent has then used the domain name to resolve to website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent has not been commonly known by the disputed domain name. The Panel notes that the WHOIS information lists “Private Registrations Aktien Gesellschaft / Domain Admin” as the registrant of the disputed domain name. See Complainant’s Exhibit B. Complainant claims that Respondent is not sponsored by or affiliated with Complainant in any way. Complainant argues that it has not given Respondent permission to use Complainant’s marks in a domain name. The Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Complainant contends that Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s website located at the disputed domain name resolves to a hyperlink directory, listing competing links such as, “The Limited,” “Womens Clothing Catalog,” “Clothing on Line,” and more. See Complainant’s Exhibit C. Complainant asserts that Respondent presumably receives pay-per-click fees from these linked websites. As such, the Panel determines that Respondent’s use of the disputed domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent is a serial cybersquatter and has repeatedly registered domain names containing names of famous persons or trademarks of other entities in order to capitalize on the goodwill developed by others. See McLaren Health Care Corporation v. Private Registrations Aktien Gesellschaft / Domain Admin, FA1476200 (Nat. Arb. Forum February 11, 2013); Panduit Corp. v. Private Registrations Atkien Gesellschaft / Domain Admin, FA1417221 (Nat. Arb. Forum January 11, 2012); GOLFNOW, LLC v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1430960 (Nat. Arb. Forum March 30, 2012). The Panel holds that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer evidence bad faith use and registration under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Secondly, Complainant also argues that Respondent has caused the website reachable by the disputed domain name to display the products of Complainant and their competitors. The Panel notes that Respondent’s website located at the disputed domain name resolves to a hyperlink directory, listing competing links such as, “The Limited,” “Womens Clothing Catalog,” “Clothing on Line,” and more. See Complainant’s Exhibit C. Accordingly, the Panel determines that Respondent’s use of the disputed domain name disrupts Complainant’s business and shows bad faith use and registration under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Thirdly, Complainant asserts that by registration of the <wwwthelimited.com>, Respondent has demonstrated a thorough knowledge of the THE LIMITED brand and business. Complainant argues that its THE LIMITED brand is known internationally and it has marketed and sold services using this mark since 1963. The Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the THE LIMITED mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwthelimited.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: April 24, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page