WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Limco, Inc. and Too, Inc. v. Pat Mintash d/b/a Mintash Enterprises
Case No. D2001-0175
1. The Parties
Complainants are Limco, Inc., located at 1105 North Market Street, Wilmington, Delaware 19801 and Too, Inc., located at 3885 Morse Road, Columbus, Ohio 43219. Complainants are represented by Frank J. Colucci, Esq. of the firm Colucci and Umans, Manhattan Tower, 101 East 52nd Street, New York, NY 10022, U.S.A.
Respondent in this matter is Pat Mintash d/b/a Mintash Enterprises. The contact address set forth in the domain name registration form is 2214 East 42nd Street, New York, NY 10165, U.S.A. Respondent is not represented by counsel.
2. The Domain Name and Registrar
The domain name in dispute is . The domain name is registered with Network Solutions Inc., located at 505 Huntmar Park Drive, Herndon, Virginia 20170.
3. Procedural History
Complainants submitted their complaint in this action to WIPO by e-mail on
February 1, 2001, and in hard copy on February 5, 2001. An amendment to the complaint was filed on February 6, 2001 by e-mail and on February 8, 2001 in hardcopy, to correct information about the Registrar. The complaint was filed in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") as well as with WIPO�s Supplemental Rules.
A verification request was sent to Network Solutions on February 6, 2001, asking that Network Solutions confirm receipt of the complaint, confirm that is registered with Network Solutions, and confirm that the Respondent is the current registrant of the domain name. Network Solutions provided the requested verification on February 7, 2001. Thereafter, by notice dated February 16, 2001, WIPO advised the Respondent that the administrative proceeding had been commenced. The notification further advised Respondent that an answer to the complaint was to be filed no later than March 7, 2001. The notification was sent to the Respondent by post, facsimile and e-mail, using the contact details that had been provided. Respondent did not file a response within the time required, nor did Respondent seek any extensions of time to file a response. As such, Respondent was declared in default, and a notice advising of this fact was sent on March 9, 2001. Thereafter on March 13, 2001, Respondent sent an e-mail communication to the Center setting forth its position. The email communication does not comply with the Policy.
The Center appointed an administrative panel to decide the case on March 22, 2001, and requested that a decision be forwarded by April 4, 2001.
4. Factual Background
This case arises out of Respondent�s registration of the domain name which, according to the WhoIs directory, was created on November 11, 2000. The domain name currently points to a website that discusses this administrative proceeding and which appears identical in substance to the email submitted by Respondent on March 13, 2001.
Complainant Limco, Inc. owns registrations for the trademark LIMITED TOO, registered in the U.S. Patent and Trademark Office. The registrations issued prior to the creation of the domain name and the registered mark continues to be in use.
Complainants sent Respondent a cease and desist letter on January 15, 2001, objecting to the domain name and asking that it be transferred. No response was received to that demand letter, and the demand letter was returned to Complainants� attorney, marked "undeliverable." There has been no other communication between the parties prior to the bringing of this action.
5. Parties� Contentions
A. Complainants
Complainants assert that they have rights in the trademark LIMITED TOO based on existing trademark registrations; use including in connection with 350 retail stores nationwide that operate under the name LIMITED TOO; advertising, promotion and sales under the LIMITED TOO mark; and the operation of a website under the domain name . Complainants contend that the disputed domain name is an intentional misspelling of the trademark in which Complainants have rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered and is being used in bad faith.
As to their evidence of bad faith, Complainants point to the fact that is a deliberate misspelling of LIMITED TOO, that the contact information provided by Respondent is inaccurate and/or invalid and that the domain name is used to divert Internet users to a pornographic website. The relief sought by Complainants is a transfer of the disputed domain name to Complainant Limco.
B. Respondent
Respondent has not formally responded to the complaint and, as such, was declared in default. Although Respondent did not provide a response pursuant to the rules of the UDRP, the Respondent did submit an e-mail to the Center on March 13, 2001. The Administrative Panel has the discretion to determine whether this supplemental communication should be considered in arriving at a decision. Given the fact that the e-mail communication was submitted before an Administrative Panel was appointed, and given that these proceedings should be an exercise in looking for the truth, as opposed to being an exercise of pure formality, the Panelist has considered Respondent�s contentions. Those contentions are that Respondent was unaware of Complainant�s rights, and that the domain name was selected because of its descriptive properties.
6. Discussion and Findings
In order for Complainants to prevail in this matter and to obtain the requested relief of a transfer of the domain name , Complainants must prove:
- That they have rights in the mark LIMITED TOO;
- That the domain name is identical or confusingly similar to Complainants� trademark or service mark;
- That the Respondent has no rights or legitimate interests in the domain name; and
- That the domain name was registered and is being used in bad faith. See Policy, paragraph 4(a).
Rights in the Mark
With respect to the Complainant Too, Inc., the record is incomplete as to what rights in the trademark this Complainant claims to have. At most, this Complainant is a licensee of certain trademark rights. However, the extent of the license, whether it is an exclusive license, and what power Too, Inc. has to enforce trademark rights in LIMITED TOO are not set forth. As such, Complainant Too, Inc. has not shown that it has rights in the marks relied upon. See NBA Properties, Inc. v. Adirondack Software Corp., WIPO D2000-1211. As to Complainant Limco, Inc., of the four trademark registrations offered into evidence (Complaint Exh. D), only one is in the name of Complainant. The other three are owned by Limco Investments, Inc. While Complainant asserts in paragraph 12(A) of the complaint that it owns these marks by assignment, the registrations do not reflect this fact nor has Complainant provided a copy of the assignment document.
Nevertheless, Complainants do have proof of a registration for the mark LIMITED TOO in the name Limco, Inc., which is sufficient evidence that Complainant Limco, Inc. has met the first requirement of the Policy that it has rights in the LIMITED TOO mark.
Identical or Confusing Similarity
The domain name at issue here is almost identical to the LIMITED TOO mark. Instead of using the term TOO, Respondent has used the term TO. As such, the domain name is deemed to be if not identical then at least confusingly similar to the LIMITED TOO trademark in which the Complainant, Limco, Inc., has established rights.
Legitimate Rights or Interests
Complainants assert that the Respondent has no legitimate interests in the domain name by making the conclusory argument that the domain name is a deliberate misspelling of the mark LIMITED TOO, and that this shows that the Respondent "is clearly and deliberately acting in bad faith." See Complaint Paragraph 12(J). Paragraph 4(a) of the Policy requires that Complainants prove that Respondent has no rights or legitimate interests in respect of the domain name. Ways to prove a lack of rights or legitimate interests are set forth in the Policy. Other than conclusory allegations, Complainants have not provided any facts to show that Respondent lacks rights or legitimate interests in the domain name. This is especially the case in light of the fact that the domain name is a common phrase in the English language and thus could certainly be registered and used by a third party without violating any of the rights of the Complainants. See, e.g., Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO D2000-0596. Accordingly, Complainants have not met their burden of proving a lack of rights and legitimate interests.
Registered and Used in Bad Faith
In light of the fact that the Panelist has found that Complainants have failed to meet their burden of showing a lack of legitimate rights or interests, there is no need to address whether Complainants have proven that the Respondent registered and used the disputed domain name in bad faith. Nevertheless, the Panelist has reviewed the evidence submitted by the Complainants in this regard.
In their complaint, Complainants make reference to the fact that the Respondent is using the domain name to divert consumers to pornographic websites. See Complaint, paragraphs 12(I), 12(J). Unfortunately, Complainants do not provide any proof of this statement and the Panelist�s review of the website now in existence does not show any intent to divert consumers to a commercial website. Moreover, the demand letter sent to Respondent (Complaint Exh. I), while making reference to such use of the domain name, also states that Respondent�s website is "confusingly similar" to Complainants�. Had Complainants produced evidence showing diversion to a pornographic website, the Panel may have found that the domain name was registered and used in bad faith. However, there is no such evidence.
The question then is whether or not the failure of Respondent to provide accurate contact details is sufficient to find that the domain name was registered and used in bad faith. The Panelist notes that the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. � 1143(d), which is binding on both parties as U.S. residents, does indicate that one factor to consider in determining whether there is bad faith in registering a domain name includes whether inaccurate contact information was provided. See 15 U.S.C. � 1143(d). However, this single factor is not dispositive. Here there is no evidence of any diversion to a site for commercial purposes, no evidence that the Respondent sought to sell the domain name, no evidence that the Respondent was using the fame or recognition of Complainants� mark for commercial purposes and no evidence that Respondent even knew of Complainants� mark. Indeed, in light of the fact that the domain name chosen is a common English expression, the element of bad faith use and registration does not appear to be met here.
7. Decision
Based solely on the limited materials submitted in this matter, the Panel, pursuant to Rule 15 of the Rules for Uniform Domain Name Dispute Resolution Policy, finds that the Complainants have not met their burden of proving each of the elements set forth in paragraph 4(a) of the Policy in relation to the domain name that is the subject of the Complaint. Accordingly, pursuant to paragraph 4(i) of the Policy, the administrative panel denies the request that the registrar, Network Solutions Inc., be required to transfer to the Complainants the domain name .
Barbara A. Solomon, Esq.
Sole Panelist
Dated: March 04, 2001
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