Complainant is Limited Stores, LLC of New Albany, Ohio, United States of America (the "USA"), represented by Frost Brown Todd LLC, USA.
Respondent is DTAC Group of Lithia Springs, Georgia, USA / Registration Private Domains By Proxy LLC of Scottsdale, Arizona, USA, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 8, 2014. On October 8, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On October 9, 2014, the Registrar transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2014. The Response was filed with the Center on November 6, 2014. Two further e-mails were submitted by Respondent on November 10, 2014.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 14, 2014. 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
Complainant is a major fashion retailer that has sold clothing and accessories under the mark THE LIMITED for more than 50 years. Complainant holds numerous registered trademarks for THE LIMITED throughout the world, including United States Patent & Trademark Office ("USPTO") registration 1,020,794 for THE LIMITED, registered in September 1975 in connection with "women's and misses' clothing."
According to Complainant, its goods and services are offered to the public only through Complainant's retail stores and Internet site, and through Complainant's authorized agents and registered representatives.
In tandem with the television network ABC, which airs the popular television series "Scandal" (starring Kerry Washington as Olivia Pope), Complainant debuted on September 23, 2014 a new line of clothing inspired by the TV series. Complainant's "Scandal Collection" was the subject of media attention in the weeks prior to the September 23, 2014 debut. For instance, a September 14, 2014 article in the New York Times appeared under the headline "'Scandal' Inspires Clothing Line at The Limited." The following day, a story appeared at the CBS News website under the headline "First Look: "Scandal"-inspired clothing line for The Limited." Prior to the September 23, 2014 launch of its new line of clothing, Complainant had also promoted the "Scandal Collection" through its direct mail, direct e-mail, and social media campaigns.
On September 24, 2014, one day after Complainant's "Scandal Collection" became available for purchase at Complainant's stores and online, Respondent registered the Domain Name. The Domain Name resolves to a website at which women's clothing may be purchased. The website features the banner "THE SCANDAL COLLECTION" above a series of displays of clothing items offered for sale. Also near the top of the home page is the phrase "Inspired by Scandal's Olivia Pope" and a reference to the web address . According to Complainant, the website does not identify the source of the clothing, and Respondent does not permit returns of merchandise purchased. In addition, Complainant alleges, clothing from competitors of The Limited (such as Burberry) is offered for sale at the website to which the Domain Name resolves.
According to Complainant, its representative attempted to make contact with Respondent on September 26, 2014, but the e-mails sent were not answered and someone answering Respondent's telephone hung up. The Domain Name had initially been registered in the name of DTAC Group, but was subsequently changed to Registration Private Domains By Proxy LLC. Respondent also refers to the Domain Name in social media pages. 5. Parties' Contentions A. Complainant
Complainant's primary factual contentions are reflected in the Factual Background section above. Complainant asserts that it has satisfied all three elements of the Policy required for a transfer of the Domain Name. B. Respondent
Respondent did not submit a formal response, but, instead, sent a series of e-mails to the Center at various times prior to the deadline for filing a formal Response. These scattered e-mails appear to deny Complainant's entitlement to the Domain Name.
In one e-mail, dated October 9, 2014, Respondent stated: "We had already started a collection with inspired clothing from the actress Kerry Washington as Olivia Pope before we knew what 'The Limited' was doing." Respondent added: "Our line caters to a different set of cliental that 'The Limited' does not even cater too [sic]," and "The domain name was picked for the use of keywords and hashtag purposes not to take anything away from 'The Limited.'"
In this October 9, 2014 e-mail, Respondent wrote further:
"We are NOT in any way representing, affiliated or a [sic] affiliate of The Limited or ABC Scandal. We are privately owned with clothing that is inspired by modern sophisticated fashion linked and catered to our friends and fans.
In no way are we making money off 'The Limited' because they are clients we already had or are in our social media groups. (…)
We are a small company, we are not a $6.4 Billion company such as 'The Limited.' Therefor [sic] there is no unfair competition to three women who have lost their jobs, trying to create their own jobs, (…)
Under no circumstances were we trying to infringe upon 'The Limited' Intellectual Property. Again, we cater to a different cliental. We would like to hastingly [sic] conclude this matter by coming to an amicable, fair and reasonable conclusion."
In another e-mail to the Center, dated November 10, 2014, Respondent stated in part: "[…]If they (Complainant) would like to pay for the domain name at a reasonable rate for transfer, we would be happy to transfer as soon as possible." No price was suggested. Complainant responded to this e-mail on November 10, 2014, stating in part: "[…]If the Respondent will not agree to transfer the domain name to Complainant at no cost, then Complainant respectfully requests that the Center appoint a panelist as soon as possible so that resolution to this matter can occur."
In yet another e-mail to the Center, dated November 10, 2014, Respondent stated in part: "[…]Because of the investment, time, money that has been spent, if the Complainant would like the domain name, they can purchase it and we will be happy to release it immediately.[…]" No price was suggested. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There is no doubt that Complainant holds rights in the longstanding, well-known, and widely registered and used mark THE LIMITED.
The Panel need not decide whether Complainant also has acquired common law rights in the mark SCANDAL COLLECTION after only a few weeks of the launch of Complainant's new line of clothing. This is because the Panel is prepared to find that the Domain Name is confusingly similar to Complainant's longstanding and well-established THE LIMITED mark. The dominant part of the Domain Name is THE LIMITED, which appears at the beginning of the disputed domain name. The term "collection" at the end of this string of characters is readily understood to refer generically to a line of clothing or accessories within the scope of THE LIMITED's strong fashion brand. The term "scandal," of course, is not descriptive of clothing and is not by itself associated with Complainant's THE LIMITED mark, but may be understood as referring to the particular type of clothing collection being marketed more generally under the umbrella of the strong fashion mark THE LIMITED. In any event, the dominance of THE LIMITED in the disputed domain name is, in the Panel's view, sufficient to support a finding that the Domain Name is confusingly similar to Complainant's THE LIMITED mark.
Accordingly, the Panel concludes that Policy paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is undisputed that Respondent has not been authorized by Complainant to use it's the LIMITED mark as a domain name or otherwise. The Panel also finds that Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. On the contrary, Respondent has directed the Domain Name, which fully incorporates the mark THE LIMITED, to a website which sells, among other things, clothing articles from at least one competitor of Complainant.
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(iv). The Panel concludes, on a balance of probabilities, that Respondent had Complainant's THE LIMITED mark in mind when registering the Domain Name. In one of its e-mails to the Center, Respondent stated: "We had already started a collection with inspired clothing from the actress Kerry Washington as Olivia Pope before we knew what 'The Limited' was doing." To the extent this statement was intended to deny knowledge of THE LIMITED as a trademark for women's clothing, it is rejected as lacking credibility (given the fame of Complainant's mark and the fact that Respondent also purports to be in the business of selling clothes to women).
The more charitable reading of this statement would be that Respondent was aware of THE LIMITED as a mark, but did not know that Complainant was about to launch its "Scandal Collection." Even this more lenient interpretation of Respondent's mindset at the time of registering the Domain Name cannot take Respondent off the hook. Above all else, one must ask why Respondent insisted on registering a Domain Name with the mark THE LIMITED at the very beginning of the disputed domain name. Respondent provides no answer to this basic question in its various disjointed missives to the Center. Another fact that must be borne in mind by one weighing the balance of probabilities is the timing of the Domain name registration, which occurred one day after Complainant's "Scandal Collection" became available for sale at stores and at Complainant's website, and in the wake of media publicity of this product launch. These considerations make it nearly impossible to credit Respondent's apparent contention that it was unaware of Complainant's mark and its intended launch of the "Scandal Collection" line of fashion clothing when it registered the Domain Name.
Respondent's website and its attendant social media activities (which also make reference to the Domain name) are designed to sell women's clothing to Respondent's customers. In the Panel's view, such conduct violates paragraph 4(b)(iv) of the Policy, as the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of products offered at Respondent's website.
Accordingly, the Panel concludes that Policy paragraph 4(a)(iii) has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: November 20, 2014
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