The Complainant is Limited Stores, LLC of Ohio, United States of America, represented by Colucci & Umans, United States of America.
The Respondent is Infinite Wireless of Vancouver, Canada. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2013. On July 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 22, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 21, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant owns and operates more than 200 retail stores in the United States of America under the mark THE LIMITED. It also operates an e-commerce Internet website connected to its domain name, .
The Complainant is the proprietor of a number of United States trade mark registrations of or including the words “The Limited”, the earliest of which is No. 1062519 dated August 6, 1976 (registered March 29, 1977) THE LIMITED (words) in class 42 for “women’s clothing store services”. Subsequent registrations include marks such as THE LIMITED COLLECTION, THE LIMITED CLASSIC CARD, THE LIMITED COUTURE CARD and AT THE LIMITED AND NOWHERE ELSE.
The Domain Name was registered on September 10, 2012 and is connected to a pay-per-click parking website featuring links to entities offering coupons, mainly retailers. 5. Parties’ Contentions A. Complainant
The Complainant contends that because the Domain Name incorporates what it claims to be the most significant element of its well-known trade mark, THE LIMITED, omitting only the definite article and because the only other element of the Domain Name is the word “coupon”, confusion is likely. The Complainant points out that periodically it issues coupons to its customers.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It asserts that the Respondent has no connection with the Complainant and does not deal in the Complainant’s goods. The Complainant contends “upon information and belief” that none of the circumstances set out in paragraph 4(c) of the Policy applies.
The Complainant contends (again “upon information and belief”) that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant further contends that in light of the Complainant’s federal registrations of its THE LIMITED trade mark, “the Respondent is deemed to have constructive notice of Complainant’s trade marks and service marks and cannot claim it was unaware of Complainant’s rights”. It goes on: “Likewise, Respondent’s use of the domain name to operate a website featuring other retail businesses further reflects its intent to trade off of the goodwill of Complainant and its mark.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
Absent the “.com” top level domain identifier, which the Panel may ignore for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, the Domain Name comprises the words, “limited” and “coupon”. It omits the definite article present in the Complainant’s trade mark and the Complainant’s trade mark omits the word “coupon”.
The Complainant contends that the word “limited” is the dominant element of its trade mark. While the Panel accepts that it is a dominant element, the presence of the definite article is, for the Panel, an important factor in the distinctiveness of the mark.
The Panel acknowledges the Complainant’s claim that coupons are regularly used by retailers to promote their services, but the term, “limited coupon”, has a possible meaning wholly unconnected with any coupons that may have been issued by the Complainant. “Limited” has a dictionary meaning, whereas “The Limited” does not. For the Panel, the absence of the definite article in the Domain Name is significant.
While this element of the Policy is widely accepted to be a low-threshold test simply designed to ensure that the Complainant has a bona fide basis for filing the Complaint and while the Panel accepts that the Complainant has a bona fide basis for making the Complaint, the Panel does not regard it an easy question and doubts that the Domain Name could reasonably be said to be confusingly similar to the Complainant’s trade mark.
However, in light of the Panel’s finding under 6D below, it is unnecessary for the Panel to come to a concluded view on this issue. C. Rights or Legitimate Interests
In light of the Panel’s finding under the next element (6D below), it is unnecessary for the Panel to address this issue. D. Registered and Used in Bad Faith
The Complainant’s allegations of bad faith are all said to be on the basis of “upon information and belief”. What information and by whom was it provided? The Complaint does not say. In fact, on this topic the Complaint is remarkably short of information. “Upon information and belief” appears to be a short-form expression meaning “we have no relevant information, but bad faith is to be inferred from the facts and we believe that that is the appropriate inference to draw”.
The “facts” in question are the following:
1. The Complainant claims that its trade mark, THE LIMITED, is very well known in the United States of America.
2. It is so well known that the Respondent must have known of it when registering the Domain Name.
3. The fact that the Respondent has added the word “coupon” to the word “limited” is indicative of the fact that the Respondent had retailers in mind, coupons being a common marketing device for retailers. In this context the word “limited” can only be a reference to the Complainant and the Complainant’s trade mark, THE LIMITED.
4. This is supported by the fact that the Respondent’s webpage features numerous links to other retailers and their coupons.
5. On top of all that, the Complainant’s trade mark registrations are United States federal trade mark registrations and by operation of United States law the Respondent has constructive notice of those registrations.
The Panel is not persuaded. The word “limited” is a dictionary word. Is the Complainant’s fame in the United States of America under the name THE LIMITED so substantial that a resident of Vancouver, Canada must have heard of it? It is possible, of course, but the Panel has been given no information upon which to make that leap. The Panel is also concerned that the definite article present in the Complainant’s trade marks is absent from the Domain Name. In the view of the Panel the absence of the definite article from the Domain Name could be a significant factor militating against a likelihood of confusion. It is to be observed that no evidence of any kind has been put before the Panel to demonstrate that “Limited” on its own (i.e. without the definite article, “The”) is ever taken to be a reference to the Complainant. That evidence may be available, but it has not been put before the Panel.
What is the significance of the fact that many of the links on the Respondent’s website are to retailers and their coupons? The Panel suspects that it is the word “coupon” which has led to these links. There is nothing on the website screenshot annexed to the Complaint to lead any reader to associate any of the links with the Complainant. Indeed, the Panel could not find any reference to the Complainant.
It may be of course that this result has been engineered by the Respondent, but here we are dealing with a domain name featuring ordinary dictionary words, the Domain Name does not incorporate the Complainant’s trade mark in full, the parties are in different jurisdictions and there is nothing before the Panel to suggest that the Respondent has a track record as a cybersquatter. There is nothing concrete upon which the Panel can make a finding of bad faith.
As to the contention that the Respondent has constructive notice of the Complainant’s trade mark registration, this argument, when it works, generally only works when a respondent is located in the United States and a complainant has a federal US trade mark. In any event, this Panel takes the view that constructive knowledge and constructive bad faith are two very different concepts.
In the view of this Panel a finding that a respondent has acted in bad faith for the purposes of paragraph 4(a)(iii) of the Policy should generally only be made where the respondent has in fact acted in bad faith or where there is very cogent evidence before the Panel as to the surrounding circumstances sufficient to support an inference to that effect. Here, in the view of the Panel, the evidence falls far short of that.
The Panel is not persuaded that the Domain Name was registered or is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Date: August 29, 2013
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