DECISION

 

Limco, Inc. and The Limited Stores Inc. v. Rarenames aka Buydomains.com aka Buy This Domain aka limited.net

Claim Number: FA0109000099693

 

PARTIES

Complainant is Limco, Inc. and The Limited Stores Inc., Columbus, OH (“Complainant”) represented by Lisa A. Dunner, of McDermott, Will & Emery.  Respondent is Rarenames aka Buydomains.com aka Buy This Domain aka limited.net, Washington , DC (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <limited.net>, registered with TierraNet, Inc.

 

PANEL

The undersigned certifies 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.

 

Carolyn Marks Johnson, Alan Limbury and Tyrus R. Atkinson, Jr., as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 11, 2001; the Forum received a hard copy of the Complaint on September 14, 2001.

 

On September 12, 2001, TierraNet, Inc. confirmed by e-mail to the Forum that the domain name <limited.net> is registered with TierraNet, Inc. and that the Respondent is the current registrant of the name.  TierraNet, Inc. has verified that Respondent is bound by the TierraNet, Inc. 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 September 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 2001 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@limited.net by e-mail.

 

A timely response was received and determined to be complete on October 29, 2001.

 

Complainants’ Additional Written Statement Filed Pursuant To Supplemental Rule 7 was filed September 24, 2001.  Complainants’ Rebuttal To Respondent’s Reply to Complaint was filed November 5, 2001.

 

On November 13, 2001, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Carolyn Marks Johnson, Alan Limbury and Tyrus R. Atkinson, Jr., as Panelists.

 

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainants.

 

PARTIES’ CONTENTIONS

A. Complainants

Complainants are LimCo, Inc and The Limited Stores, Inc, Delaware corporations having corporate offices at Three Limited Parkway, Columbus, OH 43230.

Complainant, LimCo, Inc, owns the trademark THE LIMITED, which is registered with the United States Patent and Trademark Office under nine active Registrations, and has been adopted and continually used in commerce by Complainants since at least as early as 1968 in connection with the sale of clothing and other goods, and is also the trade name used in connection with a family of some of the best fashion brands, including The Limited, Express, and Structure.  The Limited is also well known through its majority-interest in Intimate Brands, Inc., which owns the brands Victoria’s Secret, Bath & Body Works, and White Barn and Candle Co.

Complainants use the famous mark THE LIMITED as both a trade name and the name of The Limited retail stores located throughout the United States, which advertise, offer for sale and sell a wide range of items bearing the mark THE LIMITED.

As a result of the continuous success of THE LIMITED, the trade name and the trademark have acquired significant goodwill, wide public recognition, and fame as a means by which the public knows Complainants and their merchandise and their source and origin are identified.

The mark THE LIMITED has achieved incontestable status pursuant to 15 U.S.C. Sec. 1065.

Respondent’s registered the domain name <limited.net> on June 30, 2001.  The domain name is confusingly similar to and nearly identical to Complainant’s trade name and trademark THE LIMITED.  Respondent has the intent to trade upon, or profit from likely confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement or Respondent’s web site or of a product on its web site.

Respondent has never been known as <limited.net>, does not use it in connection with a bona fide offering of goods or services, and is not making a noncommercial or fair use of the Domain Name.

On July 30, 2001, Respondent, through an intermediary, Shoutloud.com, contacted Complainants by sending an email stating that since Complainants owned the Domain Name <LIMITED.COM>, that Complainants should know that the Domain Name, <limited.net>, was for sale.  Upon inquiry, Complainants learned that <limited.net> was for sale by Respondent for an asking price of $5888.00.

Complainants cannot conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as being passed off, an infringement of consumer protection legislation, or an infringement of Complainants’ rights under trademark law.

 

B. Respondent

Respondent is a domain name registrar and broker/agent and is an owner of several common word domain names, which it has listed for resale at BuyDomains.com.  Respondent has been in business since 1999 and employs 10 people.

While Complainants have alleged that they received an email from a company called Shoutloud.com advertising the sale of the Disputed Domain, that company, located in the UK is merely an independent reseller of BuyDomains.com’s domain names.

The Disputed Domain incorporates only the common word “limited.”  Complainants’ mark, “The Limited,” contains two words, so it is obvious that Complainants’ mark and the Disputed Domain are not identical, nor are they confusingly similar.  The article, “The” which refers to Complainants specifically, renders the mark very different from the Disputed Domain.

<Limited.net> incorporates only a common generic word.  Accordingly, at the point of registering the domain name, Respondent was vested with irrevocable rights and a legitimate interest in the Disputed Domain.

The business of reselling common word domain names is a legitimate business.  Under the Policy, Respondent’s legitimate sale of common word domain names establishes a legitimate interest where the only purpose in registering a common word domain is for resale.

Complainants fail to carry the burden on bad faith registration and use.  Where the mark is a common word, as it is here, bad faith can only be proven if there is evidence that Respondent registered the domain name specifically to sell to Complainants or that the value of the domain name derived exclusively from the fame of the trademark.

The solicitation to sell the domain name <limited.net> by the British firm Shoutloud.com was not authorized by Respondent.  Respondent has no control over the operations of resellers. It is clear from the solicitation cited in the Complaint that Shoutloud.com contacted Complainants not because it owned a trademark but because the WHOIS report showed that Complainants owned the similar domain name <LIMITED.COM>.

Respondent’s offer to settle this dispute by selling the domain name <limited.net> to Complainants is an offer to settle and is not bad faith.  Because the domain name contains only the common word “limited” Respondent may legitimately offer to sell it to anyone it pleases without running afoul of the Policy, so it cannot constitute bad faith.

Respondent submits that this is a case of Reverse Domain Name Hijacking.  It is wrong for lawful registrants of common word domain names to have to suffer the expense and hardship of defending a frivolous claim like this one.

 

C. Additional Submissions

Complainant’s Additional Written Statement Filed Pursuant to Supplemental Rule 7 alleged that Respondent communicated with Complainants after the filing of the Complaint and offered to sell the Domain Name <limited.net> to Complainants for $3,500.00.  This, Complainants contend, shows a lack of legitimate interest in the domain name and is evidence of bad faith.

Complainant’s Rebuttal To Respondent’s Reply To Complaint alleges that Complainants own registrations and common law rights not only in The Limited but to Limited as well.  The article “THE” does not add any source identifying distinctiveness to the term protected.  Complainants’ federal trademark registration for THE LIMITED protects usage of LIMITED without the accompanying article “the.”  In response to the original solicitation, Complainants checked BuyDomains.com site and received a message from BuyDomains.com on July 18, 2001 offering to sell the domain for $5888.00, an amount roughly 100 times BuyDomains.com’s out of pocket expenses.  Respondent’s offer came well before the Complaint was filed.  Respondent’s offer to sell <limited.net> for $3500.00 was the second offer, which is many times, more than out-of-pocket expense.  Respondent did not submit any evidence that it prohibited or restricted Shoutloud.com from soliciting trademark owners.  To the contrary, the initial solicitation occurred a mere eleven days after BuyDomains.com registered it, thus indicating that the two entities worked closely and quickly to solicit Complainants.

 

FINDINGS

1.      LimCo, Inc is the United States record owner of the trademark THE LIMITED, which it licenses to The Limited Stores, Inc.  Complainants use the mark THE LIMITED as both a trade name and the name of The Limited retail stores located throughout the United States, which advertise, offer for sale and sell a wide range of items bearing the mark THE LIMITED.

2.      The trademark THE LIMITED is registered with the United States Patent and Trademark Office under nine active Registrations, and has been adopted and continually used in commerce since as early as 1968.

3.      Respondent is a domain name registrar and broker/agent, which registers common word domain names and offers them for sale at the website BuyDomains.com.

4.      Complainants own and operate a website at <LIMITED.COM> which existed prior to the registration of <limited.net>.

5.      On June 30, 2001, Respondent registered <limited.net>.

6.      On July 16, 2001, Complainants received an email from Shoutloud.com stating: “According to the public WHOIS records, you currently own LIMITED.COM, and so we felt that you would wish to know about the sale of LIMITED.NET.”  The email provided a link to Respondent’s website where Complainants, if they chose to do so, could bid on <limited.net>.

7.      Complainants contacted Respondent’s website and learned that <limited.net> was for sale for a price of $5888.00.

8.      Shoutloud.com operates under Respondent’s “Premium Reseller Program” which makes Shoutloud.com a partner by merging customer demand with Respondent’s supply of premium domain names thereby providing Shoutloud.com with a “significant additional revenue stream.”  Shoutloud.com earns 10% of total domain sales. 

9.      After the Complaint was filed in this case, but before a Response was filed, Respondent contacted Complainants and offered to sell <limited.net> to Complainants for the sum of $3500.00.

10.  Complainants’ trademark THE LIMITED and Respondent’s Domain Name, <limited.net> are confusingly similar.

11.  Complainants have rights in THE LIMITED.

12.  Respondent has no rights or legitimate interests in the <limited.net>.

13.  Respondent registered and uses <limited.net> in bad faith.

 

DISCUSSION

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

Complainants have rights in the words THE LIMITED resulting from the trademark registrations of THE LIMITED.  Complainants contend that THE LIMITED and the Domain Name <limited.net> are identical.  Respondent contends that the word “The” in the trademark makes THE LIMITED and LIMITED completely different.  Complainants contends that “The” does not add or create any unique effect when used in conjunction with another word as part of an overall trademark, citing In re G.D. Searle & Co., 143 USPQ 220 (S.D.N.Y. 1993.  A similar result was reached in The Cold War Museum v. Jampol, FA 96594 (Nat. Arb. Forum Mar. 26, 2001), where “The Cold War Museum” was compared to “Cold War Museum”. 

The .net gTLD is not to be considered as amending the word limited.  See Boo YI Park DADA Corp. v. Sobrino Jaun-Carlos d/b/a Dada, Inc. FA 97299 (Nat. Arb. Forum July 3, 2001).

“The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is usually confined to a consideration of the disputed domain name and the trademark”.  Playboy Enterprises International, Inc. v. Vileshome, D2001-1082 (WIPO Oct. 30, 2001).  Using this standard, there is no question that THE LIMITED and <limited.net> are confusingly similar.    

 

Rights or Legitimate Interests

Complainants show that they are the owners of the trademark contained in the domain name.  This gives Complainants exclusive right to use the mark. See America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar 21, 2000).  Respondent is not an agent or licensee of Complainants.  Respondent has never been known as <limited.net> or “limited” prior to registration of the domain name.  As a result of Complainants’ showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name, the burden must shift to Respondent to demonstrate its rights and interests in the domain name.  See Clerical Med. Inv. Group Ltd v. Clericalmedical.com, D2000-1228 (WIPO Nov 28, 2000).  Respondent may do so by any of the methods set out in the Uniform Domain Name Resolution Policy.

Respondent admits that it holds the domain name for sale.  Merely registering and stockpiling domain names for subsequent sale without more fails to constitute any bona fide offering of goods or services under such domain name or a legitimate non-commercial or fair use of each such name.  See Playboy Enterprises, Inc. v. Hector Rodriquez, D2000-1016 (WIPO Nov 28, 2000).  See also iKnowledge, Inc. v. Hot Rod Email Services. FA 97066 (Nat. Arb. Forum May 25, 2001).

Respondent further contends that the word “limited” is a common word of the English language and is “only a common generic word. Accordingly, at the point or registering this domain name, Respondent was vested with irrevocable rights and a legitimate interest in the Disputed Domain.”  That assertion, standing alone, is incorrect.  Ordinary English words such as “crew”, “playboy”, “quicktime” and “scholastic” have been granted trademark registrations that have been protected in domain dispute cases. See Apple Computer, Inc. v. DomainHouse.com, Inc., D2000-0341 (WIPO July 5, 2000); Scholastic Inc. v. 366 Publications, D2000-1627 (WIPO Feb. 21, 2001); Playboy Enterprises International, Inc. v. Vileshome, D2001-1082 (WIPO Oct. 30, 2001); J. Crew International, Inc. v. crew.com, D2000-0054 (WIPO Arp. 20, 2000).

Complainants have amply shown that its Trademark, THE LIMITED, is famous and has acquired secondary meaning to identify the products and services provided by Complainants.

Respondent next attempts to show that its registration of <limited.net> is permissible under the rationale employed in First American Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001).  In that proceeding the respondent was able to show, to the satisfaction of the majority of the Panel, that the term “First American” is widely adopted and used by a variety of different businesses extending across a spectrum of business activities and geographical locations.  This wide-spread use by others was found by the evidence as a “relatively mundane commercial name used by a wide variety of businesses.” On that finding, a divided Panel decided that Respondent has established legitimate rights and interests.  The Panel went on to say that the “situation would of course be different if the words were well known and unique to one trader”.  Respondent’s evidence in this case is not sufficient to prove that Complainants’ trademark has been “adopted and used” by others.  Furthermore, Complainants have advanced evidence to illustrate that the words, THE LIMITED, is well known and unique to Complainants.

Respondent relies on General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) and other decisions which turn on the widespread use of a term to which Complainant has a trademark registration, but where the mark is in widespread use in a descriptive sense by many entities.  In that case, as in the others cited on this proposition, the Complainant presented no satisfactory evidence to establish either fame or strong secondary meaning in its mark such that consumers are likely to associate the mark only with the Complainant.  Under that lack of evidence by Complainants, Respondents were found to have legitimate rights and interests.  In this case, Complainants have presented evidence of fame and strong secondary meaning for THE LIMITED.  The line of cases cited by Respondent does not support Respondent under the facts and circumstances of this domain name dispute.

Respondent is found to have no rights or legitimate interests in the Domain Name, <limited.net>.

 

Registration and Use in Bad Faith

The burden of showing bad faith on the part of the Respondent is upon the Complainants.  Bad faith may be shown by any of the methods set out in the Uniform Domain Name Dispute Resolution Policy in Paragraph 4(b).

Complainants contends that Respondent registered <limited.net> on June 30, 2001, long after Complainants had established rights in and to the trade name and mark THE LIMITED.  Complainants contend that Respondent was upon constructive notice of Complainants’ United States Patent & Trademark Registrations.  Complainants contend that Respondent was upon actual notice of Complainants’ rights based upon the email approach of Shoutloud.com on July 16, 2001, putting Complainants on notice of the sale of <limited.net> providing a link directly to Respondent’s site where bids were being accepted for <limited.net>.

Complainants allege that Respondent registered <limited.net> for the purpose of selling it. 

Complainants assert a pattern of such conduct on the part of Respondent citing domain dispute cases in which this Respondent was involved.  The cases cited by Complainants are  Distinctive Designs International, Inc. v. DestinctiveDesigns.com, FA 95478 (Nat. Arb. Forum Oct. 5, 2000) and Sintef v. Sintef.com, D2000-0507 (WIPO June 9, 2001).

Respondent counters by stating that it does not lose all such domain name disputes citing John L. McCune v. BuyDomains.com, AF854 (eResolution Aug. 3, 2001).

Complainants contend that it is not possible to conceive of any plausible actual or contemplated active use of <limited.net> by Respondent that would not be illegitimate, such as passing off, an infringement or consumer protection legislation, or an infringement of Complainants’ rights under trademark law.

Respondent contends that Complainants have not met the burden of proving bad faith registration and use.  There is no evidence, Respondent contends, that Respondent registered the disputed domain name for the purpose of selling, renting or transferring it to Complainants; to prevent Complainants from reflecting its trademark in a domain name, together with a pattern of such conduct; or to disrupt Complainants’ business or attract customers seeking to purchase its products. Respondent contends that the “solicitation” of Complainants came from the British firm Shoutloud.com, not from Respondent and that Respondent did not authorize it.  Respondent has no control over the operations of resellers, it is contended.  Shoutloud.com contacted Complainants, not because they owned a trademark but, rather, because the WHOIS report showed that Complainants owned the similar domain name <LIMITED.COM>.  A review of the agreement between Respondent and Shoutloud.com, taken by Complainants from Respondent’s website and submitted in evidence, does not require Respondent’s authorization for any specific “solicitation”.  Shoutloud.com is authorized to try to solicit the sale of any domain name offered by Respondent for bid or sale.  The effect of the agreement between Respondent and Shoutloud.com is that Shoutloud.com becomes the agent for Respondent for any act done in the ordinary scope of the agency.  Respondent is bound by the acts of its agent and the solicitation of Complainants by Shoutloud.com is the same as if the solicitation was done directly by the Respondent. Respondent contends that its offer to sell the Domain Name, <limited.net> to Complainants after the domain name dispute was filed for the sum of $3500.00, was an offer to settle the dispute, and under ordinary legal principles, should not be admissible in this proceeding.  Under the facts and circumstances of this case, that reasoning is rejected.  This offer to sell is accepted as evidence in this case on the issue of bad faith.

Under all of the facts and circumstances, and proper inferences that can be drawn there from, the conclusion is made that Respondent registered and is using the Domain Name <limited.net> in bad faith.  Respondent registered <limited.net> for the purpose of selling the Domain Name to the Complainants who are the owners of the mark or to a competitor of that Complainant, for a valuable consideration in excess of Respondent’s out of pocket costs directly related to the Domain Name.

 

Reverse Domain Name Hijacking

Respondent contends that Complainants have engaged in reverse domain name hijacking contending that “It is well established under the Policy that the registration and sale of common word domain names established the Respondent’s legitimate interest” and that THE LIMITED is not identical to <limited.net>.  Respondent fails to show that Complainants brought the claim in bad faith despite the knowledge that Respondent has an unassailable right or legitimate interest in the disputed domain name, or that Respondent lacks the requisite bad faith registration and use of the disputed domain name.  See Koninklijke KPN N.V. v. Telepathy Inc., D2000-0217 (WIPO May 7, 2001).  Complainants did not attempt to mislead the Panel with respect to its rights in the mark.  See Commonwealth Communications Group, Inc. v. David Lahoti dba eSecure, FA 100124 (Nat. Arb. Forum Nov. 5, 2001).  There is no reverse domain name hijacking in this proceeding.

 

DECISION

It is hereby ordered and adjudged that the Domain Name, <limited.net>, now registered to Respondent, RARENAMES a.k.a. BUY THIS DOMAIN, LIMITED.NET AND BUYDOMAINS.COM, be transferred to Complainant, LimCo, Inc.

 

 

Carolyn Marks Johnson, Alan Limbury and Tyrus R. Atkinson, Jr., Panelists

 

Dated: November 27, 2001

 

 

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