Limco, Inc. v. Jenkins GMC
Claim Number: FA0207000115082
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”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <limited.biz>,
registered with Blueberry Hill
Communications.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@limited.biz 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
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.
B.
Respondent
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.
FINDINGS
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.
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
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.
DECISION
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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