WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Limco, Inc., Limtoo, Inc., and Too, Inc. v. Lauren Rogers
Case No. D2001-1015
1. The Parties
1.1 The Complainants are Limco, Inc., a Delaware corporation, having its principal office located at 1105 North Market Street, Wilmington, Delaware 19801, Limtoo, Inc., a Delaware corporation, having its principal office located at 1105 North Market Street, Wilmington, Delaware 19801 and Too, Inc., a Delaware corporation, having its principal office located at 3885 Morse Road, Columbus, Ohio, USA.
1.2 The Respondent is Lauren Rogers, an individual, residing at 2320 Tuttington, Oklahoma City, Oklahoma, USA.
2. The Domain Name and Registrar
2.1 The disputed domain name is <limitedtooonline.com>.
2.2 The registrar of the disputed domain names is Namesecure.com, Inc., having a mailing address of P.O. Box 27096, Concord, California, USA.
3. Procedural History
3.1 Complainants initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on August 9, 2001.
3.2 On August 17, 2001, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.3 On August 17, 2001, WIPO transmitted Notification of the Complaint and Commencement of the Proceedings to Respondent.
3.4 On September 10, 2001, WIPO transmitted Notification of Respondent's Default to the Respondent.
3.5 On September 11, 2001, WIPO received an email from Cheryl D. Rogers indicating that the registrant, Lauren Rogers, was her twelve year old daughter and that she was responding to the complaint on her behalf. Ms. Rogers also requested a thirty (30) day extension of time to respond to the complaint.
3.6 On the same day, WIPO transmitted an email response to Ms. Rogers indicating that her request for an extension of time would be forwarded to the Administrative Panel, which WIPO was in the process of appointing.
3.7 On September 12, 2001, WIPO received a second email from Ms. Rogers requesting the identity of the panelist and an explanation of how panelists are selected.
3.8 On the same day, WIPO transmitted an email response to Ms. Rogers answering her questions and directing her to the WIPO web site address for further information on the entire domain name dispute resolution procedure.
3.9 On September 12, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On the same day, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.
3.10 On September 13, 2001, Complainants and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances it would be required to forward its decision to WIPO by September 27, 2001.
3.11 On September 26, 2001, the Panel issued a first procedural order granting the Respondent's request for an extension of time to respond to the complaint. The Panel allowed the Respondent to file its response on or before October 10, 2001. The Panel also provided the Complainants the opportunity to file a reply to Respondent's submission on or before October 19, 2001.
3.12 On October 8, 2001, the Respondent filed its submission in response to the Complaint.
3.13 On October 19, 2001, the Complainants filed their reply to Respondent's submission.
3.14 By email dated October 23, 2001, Respondent requested leave to file a surreply. On October 29, 2001, the Panel issued a second procedural order denying Respondent's request.
3.15 WIPO and the Panel also received a total of three email correspondences between Complainants' counsel and Respondent's representative related to settlement. Having heard nothing further from the parties, the Panel presumes the parties did not reach a settlement.
The Panel has not received any further requests from Complainants or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainants Limco, Inc., Limtoo, Inc. and Too, Inc. have used the mark LIMITED TOO in interstate commerce since at least September 16, 1987, in connection with clothing and accessories for girls.
4.2 Complainant, Too, is a nationwide retailer of clothing and accessories for girls and is the owner and operator of over 400 LIMITED TOO retail stores located throughout the United States.
4.3 Complainant, Limco, is the registered owner of the following United States Trademark Registrations for the LIMITED TOO trademark: 1) Registration No. 2,427,419 in International Class (herein "I.C."), 35; 2) Registration No. 2,243,563 in I.C. 25; 3) Registration No. 1,636,474 in I.C. 42; 4) Registration No. 1,726,609 in I.C. 3, and 5) Registration No. 1,492,347 in I.C. 25.
4.4 Complainant, Limco, is also the registered owner of numerous foreign trademark registrations of the LIMITED TOO Trademark such as Argentina, Australia, Benelux, Brazil, Bulgaria, Canada, Chile, China, Denmark, Finland, France, Germany, Greece, Indonesia, Israel, Japan, Jordan, Mexico, Norway, Portugal, Russian Federation, Saudi Arabia, Singapore, South Africa, Spain, Switzerland, Taiwan and the United Kingdom.
4.5 Complainant, Limco, is the owner of the LIMITED TOO trademark registrations. Complainant, Limtoo, is the licensee of Limco, and Too is the sublicensee of Complainant, Limtoo.
4.6 Respondent Lauren Rogers ("Rogers") registered the domain name <limitedtooonline.com> on July 26, 2000. Respondent currently operates a web site at <limitedtooonline.com> that is identical and/or substantially similar to Complainant Too's web site.
5. Parties’ Contentions
"Respondent has maintained and continues to maintain a website at <limitedtooonline.com> that is virtually identical to Too's website. Respondent has basically appropriated Too's website at its website."
"On April 25, 2001, Complainants sent Respondent a cease and desist letter via FedEx demanding that Respondent shutdown the website and transfer the infringing domain name to Limco. A copy of the letter, the FedEx AirBill and printout from FedEx's website confirming delivery of the letter are attached hereto as Exhibit 11."
"On April 30, 2001, attorneys for Complainants observed that Respondent had shutdown her infringing website at <limitedtoonline.com>, and merely displayed the following statement, "Limited Too Online – Lauren's Limited Too Page is temporarily shutdown… when I have time ill tell you why."
"Although Respondent shutdown the infringing website on May 3, 2001, attorneys for Complainants sent an additional letter to Respondent notifying her that we had not received a response from her stating that she would transfer the domain name to Limco. A copy of the letter, FedEx Airbill and a printout of FedEx's online tracking system confirming delivery are attached hereto as Exhibit 13."
"On May 9, 2001, the attorneys for Complainants received an e-mail from Respondent claiming Respondent was twelve years old and that she would not transfer the domain name to Limco. Respondent admitted that she had appropriated Too's website and that she did not understand the problem. Respondent also stated that the web page had only been shutdown temporarily, but that she wanted to continue to use the domain name as a website associating itself with Too."
"Attorneys for Complainants responded to Respondent's e-mail on May 15, 2001 and May 22, 2001, requesting again that Respondent provide a response and agree to transfer the domain name to Limco. To date, Complainants have never received any further communication from Respondent."
"Finally, attorneys for Complainants sent a final letter on May 29, 2001, via U.S. Express Mail, requesting a response, and to date Complainants have not received a response from Respondent."
"Respondent's <limitedtooonline.com> domain name incorporates LIMITED TOO's registered trademark in its entirety. The only difference between Complainants' trademark and Respondent's domain name is that Respondent has inserted the word "online"."
"The word "online" in Respondent's domain name signifies to Internet Users that Complainant, Too, is online, and operates an active website. In addition, Respondent has appropriated, without authorization, Too's website at <limitedtooonline.com>, thus further confusing Internet Users that Respondent's website and domain name is Complainants' website or that Respondent's website is somehow affiliated, associated or connected in someway with Complainants."
"Respondent does not own any state or federal trademark registrations for the LIMITED TOO Mark or for any similar Mark. Respondent merely refers to herself at her website as Lauren's Limited Too Page and/or Website in small print."
"Respondent does not offer for sale any products or services in connection with the domain name, rather Respondent incorporates portions of Complainants' website without the authorization of Complainants. Respondent's use of Complainants' LIMITED TOO Mark as part of her domain name and in connection with her website is unauthorized and will cause confusion among Internet Users."
"Respondent does not have a license agreement with either Complainant, nor have Complainants granted Respondent authorization to use the LIMITED TOO Mark or any portion of its website."
"Respondent registered the <limitedtooonline.com> domain name with full knowledge of Complainants' LIMITED TOO Mark. In fact, Respondent registered the domain name with the intent of creating an association and affiliation with Complainants' stores, merchandise and website, because there is no other business in the United States that is advertising for sale and selling clothing and accessories to pre-teen girls in connection with the LIMITED TOO Mark."
"In addition, the LIMITED TOO Mark has become famous because Too uses the LIMITED TOO Mark in connection with the sale of merchandise and accessories in its retail stores, catalogue and website. Too operates and owns over 400 retail stores located throughout the United States and Too's net sales for the year 2000 were in excess of $545 million. A copy of Too's 2000 annual report is attached hereto as Exhibit 17. Thus, Respondent was aware of the LIMITED TOO Mark and was aware of Too's retail stores, catalogue and website and Respondent deliberately registered the <limitedtooonline.com> domain name with the intent to appropriate the fame and good will associated with Complainants' LIMITED TOO Mark."
"Respondent has used and continues to use the <limitedtooonline.com> domain name in bad faith, because Respondent has appropriated portions of Too's website as part of its website."
"Moreover, the remainder of Respondent's website which is not directly copied or appropriated from Too's website, is substantially similar to Too's website. Respondent makes use of vibrant colors and cartoon-like imagery, and the LIMITED TOO Mark is used throughout Respondent's website. When an Internet User initially links onto Respondent's website, the Internet User will most likely believe that they have linked onto Too's <limitedtoo.com> website. Thus, Respondent is attempting to replicate Too’s website and confuse Internet Users."
"Once Respondent received Complainants' initial cease and desist letter, Respondent shutdown her website. Although the website was not completely inactive, Respondent merely had a single web page with a statement that her website was shutdown temporarily. However, in late May, Respondent reactivated the domain name and established her current website which continues to infringe the LIMITED TOO Mark and its website. Respondent’s reactivation of her website, which is substantially similar to Too’s website, further demonstrates Respondent’s bad faith use of the domain name."
"Furthermore, despite our continued attempts to correspond with Respondent, she has refused to respond to any of our letters or e-mails. Respondent's failure to contact Complainants demonstrates that Respondent registered and continues to use the <limitedtooonline.com> domain name in bad faith."
"Until review of the Complainants submission, the Respondents authorized representative, Cheryl D. Rogers, was unaware of the extent of communication, both Federal Express and e-mail, between the Complainant legal representative, Colucci & Umans, and the Respondent Lauren Rogers."
"The Respondent registered the domain name <limitedtooonline.com> on July 26, 2000, as shown in Exhibit 3. The Respondent has not registered the <limitedtooonline.net>, <limitedtooonline.org>, nor <limintedtooonline.info> as shown in Exhibit 4. The Respondent developed the web site purely as an enthusiast for Limited Too girls fashions. Exhibit 5 offers evidence of fashion purchases to Limited Too retail stores and catalogue for the Respondent by her parents Charles Brent Rogers and Cheryl Denise Rogers."
"The Respondents <limitedtooonline.com> site is non-commercial. Since its creation, the <limitedtooonline.com> site has undergone various stages of evolution. The initial site offered services to allow young girls to chat about Limited Too products and share other information about Limited Too fashions. Visitors were allowed to sign a guest book and become a member of the fan club. As of April 23, 2001, the site provided services to 73 member enthusiasts of Limited Too fashions for girls as shown in Exhibit 6."
"The Respondent is not affiliated with Complainant and <limitedtooonline.com> has a prominent disclaimer at the initial entry that states this. As shown in Exhibit 7, the Respondent clearly identifies that <limitedtooonline.com> is Laurens site via three different means: 1) the identification of "Lauren’s Limited Too Page" as a banner cross the top of the screen; 2) by stating "Limited Too is owned and © by Too Inc. Lauren does not own Limited Too or manage it in any way. This is just a fan page."; and 3) by requiring users to "click" on one of the following three options. As the user moves the cursor across the text of each option, the option is enlarged and underlined. The options are:
Go to Lauren’s site which is owned by Lauren (hosted at eccentrix.com/misc/limitedtoo/enter.html which is not under dispute) Go to the official Limited Too web page (hosted at limitedtoo.com). Note the clear annotation that site is owned by Too, Inc. so to avoid user confusion of which site they are entering Get lost (a joke). – A typical 12 year old having fun."
"The Respondent acknowledges LIMITED TOO is a service mark of LIMCO, INC. However, the date of trademark registration by the Complainant LIMCO, INC. for Registration No. 2427419 for the LIMITED TOO service mark was February 6, 2001, as shown in Respondents Exhibit 8. The Respondent registered the subject domain name on July 26, 2000, prior to the USPTO trademark registration date. Although the trademark is currently a service mark of LIMCO, INC., this does not prevent other parties from using the words LIMITED TOO in a domain name registration. The trademark registration law prohibits the use of a trademark belonging to someone else in a way that might confuse the public. Accordingly, the Respondent attached the suffix "online" and makes an official disclaimer on the entry page of <limitedtooonline.com>."
"Registration number 1726609, 1492347, and 1636474 are registered by LIMCO INVESTMENTS, INC., which is not an identified as a Complainant."
"The Respondent acknowledges the Complainant has foreign trademark registrations of Limited Too, but not limitedtooonline. The Complainant attempts to demonstrate full ownership of the words "limited", "too", and "online" by submitting numerous foreign trademark registrations. A large percentage of the registration certificates are to LIMCO INVESTMENTS, INC., which is not an identified Complainant."
"The Complainant provided copies of the <limitedtoo.com> site that consisted of 5 pages. The Complainants site is no longer available online. Exhibit 9 is the current website content of <limitedtoo.com>. The Respondents original site was much more developed. As with <limitedtooonline.com>, websites periodically undergo construction to generate continued interest among the constituents. The Complainant did not provide sufficient evidence that demonstrates the websites are identical in content."
"Too, Inc is not the current registrant of the domain names <limitedtoo.net>, <limitedtoo.org>, <limited2.com>, <limited2.net>, <limited2.org>, <ltd2.com> <ltd2.net> and <ltd2.org>. These domain names are registered to LIMCO, INC. See Exhibit 10. The Respondent, however, acknowledges that LIMCO, INC. is identified as a Complainant."
"The Respondents <limitedtooonline.com> site was not identical to <limitedtoo.com> as evidenced by the exhibits the Complainant submitted. The Respondent acknowledges that portions of the Limited Too website were used in the development of her site <limitedtooonline.com>. In doing so, the Respondent did not violate trademark laws nor copyright registration laws. The Complainant did not provide proof of copyright registration which would give the Complainant exclusive right to the work. If the Complainant desired to protect the content ("original works of authorship") in accordance with the 1976 Copyright Act, a Copyright Registration should have been provided on the Complainants limitedtoo.com site."
"<limitedtooonline.com> has gone through various stages of evolution by the Respondent to attract other Limited Too enthusiasts. Prior to the submission of the complaint, the Respondent modified the website to ensure that visitors to <limitedtooonline.com> do not mistake this website for the official Too, Inc website. The updated <limitedtooonline.com> website is currently under construction. Exhibit 7 contains the current website contents. As outlined in Paragraph 8 above, the Respondent clearly distinguishes that <limitedtooonline.com> is a fan website and is not the official Limited Too site owned by Too, Inc."
"The only website under dispute is <limitedtooonline.com>. The subsequent pages reflect a different web address – eccentrix.com/misc/limitedtoo/enter.html that are not under dispute. Reference Exhibit 7 page 2."
"As shown in Exhibit 11, the email from the Respondent to the Complainant, the Respondent indicated a willingness to rename her domain name by innocently asking the Complainant what would be an acceptable domain name. This offer still stands. The Respondent is willing to transfer the domain name <limitedtooonline.com> to Too, Inc if the Complainant would assist her in identifying an available domain name that appropriately signifies the domain name as an enthusiast Limited Too fan. The Respondent has considered using the domain name <limitedtoogirl.com> or <limitedtoofanclub.com>. <limitedtoogurlzz.com> is also a consideration since the Respondent is widely known by her Limited Too fan and friends as Ltd2gurlzz@aol.com. Should the Administrative Panel rule in favor of the Complainant, the Respondent asks the Administrative Panel to mediate a solution or provide discussion that would enable the Respondent to establish an acceptable domain name that signifies the Respondent site as a Limited Too fan."
"Communication on May 15, 2001, and May 22, 2001, was via email to the Respondent. The Respondent felt she was being intimidated given the number of demand memos and emails she had received in such a short period of time. The Respondent chose to discontinue further communicate with the Complainants representative."
"<limitedtooonline.com> is similar, but it is not confusingly similar. Although the trademark Limited Too is currently a service mark of LIMCO, INC., this does not prevent other parties from using the words LIMITED TOO in a domain name registration. The trademark registration law prohibits the use of a trademark belonging to someone else in a way that might confuse the public. Accordingly, the Respondent attached the suffix "online". The word "online" as a suffix was chosen to differentiate this site from the <official limitedtoo.com> site. While other words could have been chosen, other words would not serve to add further difference. As shown in Exhibit 11, the email from the Respondent to the Complainant, the Respondent indicated a willingness to rename her domain name by innocently asking the Complainant what would be an acceptable domain name. This offer still stands."
"The Respondent acknowledges that portions of the Limited Too website were used in the development of her site <limitedtooonline.com>. In doing so, the Respondent did not violate trademark laws nor copyright registration laws. The Complainant did not provide proof of copyright registration which would give the Complainant exclusive right to the work. If the Complainant desired to protect the content ("original works of authorship") in accordance with the 1976 Copyright Act, a Copyright Registration should have been provided on the Complainants <limitedtoo.com> site."
"The Respondent registered the domain name as a Limited Too girls fashion enthusiast to promote Limited Too fashions. The Respondent clearly does not represent herself in any manner as having an affiliation with Too, Inc. as referenced in Exhibit 7. The Complainant and Respondent are not competitors. The Respondent has not registered the <associated .org>, .net, and .info extensions of limitedtooonline as shown in Exhibit 4. The Respondent did not register the website in an attempt to attract visitors for commercial and/or financial gain. No monetary transactions are available at this website. The Respondent is making a legitimate non-commercial and fair use of the domain name, without intent for commercial gain. The Respondent does not mislead or divert visitors or tarnish the Limited Too trademark. The Respondent owns no other domain names."
"The Respondent did not register the <limitedtooonline.com> domain name with the intent to damage the fame and goodwill associated with the Complainant. The Respondent did not acquire the <limitedtooonline.com> domain name for purpose of selling it to the Complainant. The Respondent has never offered to sell the <limitedtooonline.com> domain name. The twelve-year-old Respondent used her allowance money to purchase the domain name. The Respondent has never offered to sell this website. The Respondent has not nor plans to receive any financial gain from operating this website."
"The websites are not similar. The Respondent temporarily disabled the <limitedtooonline.com> site by posting a statement that the website was temporarily shutdown. This was accomplished on or about May 9, 2001, given the demands by the Complainants legal representative. A revised website was reactivated at a later date after researching ICANN and Cybersquatting Policies and the Respondent believing to be operating this website in accordance with established policies. The Complainant has not presented sound proof that the Respondent is in violation of ICANN and Cybersquatting policies."
"The Respondent is twelve and as such, is not in a position to fully understand the issues in question. Exhibit 11, which is an email from the Respondent to the Complainants representative, clearly demonstrates the Respondent was interested in resolving the situation. Exhibit 12 from the Complainant does not attempt to work toward resolution, rather another additional demand that did not make sense to a twelve year old girl who LOVES Limited Too (and still does, regardless of all the repeated demands). As shown in Exhibit 11, the email from the Respondent to the Complainant, the Respondent indicated a willingness to rename her domain name by innocently asking the Complainant what would be an acceptable domain name. This offer still stands."
"In response to the allegations contained in paragraph 7 of the Response, Complainants acknowledge that Respondent has changed her website twice since Complainants sent their initial cease and desist on April 25, 2001. Thus, Respondent was clearly aware that there was a problem and that owners of the LIMITED TOO Mark objected to her use of the domain name <limitedtooonline.com> and her website at the domain name."
"In addition, in paragraph 12(24) of the Response, Respondent’s representative claims that the second changes to Respondent’s website, which is Respondent’s current website, were done in conformity with ICANN’s Policies. However, ICANN's Uniform Domain Name Dispute Resolution Policy does not make reference to the use of disclaimers, and if Respondent was able to consult and understand ICANN's Uniform Domain Name Dispute Resolution Policy, then Respondent had an understanding of Complainants' claims that her registration and use of the <limitedtoonline.com> domain name was confusingly similar to Complainants' LIMITED TOO Mark."
"Respondent's initial website, as noted in Exhibit No. 10 attached to the Complaint, incorporated portions of Complainants' <limitedtoo.com> website into Respondent's website. Internet users would navigate Respondent's website but would be viewing actual sections of Complainants' website. The website contained extensive information about Complainants and their products. When Complainants became aware of Respondent's domain name and website in April 2001, Respondent did not use the words "fan club" or "Limited Too Fan Club" at any place on her website. Complainants acknowledge that Respondent's website as of April 2001, allowed Internet users to submit personal and contact information to Respondent."
"Complainants acknowledge that Respondent is not affiliated with Complainants as asserted in paragraph 8 of the Response. However, Respondent's disclaimer was not included on Respondent's website until after Respondent received Complainants' cease and desist letters and after she reactivated her website sometime in June of 2001. Respondent's current disclaimer on the website is displayed in print that is very small and difficult to read. The disclaimer does not contain any distinguishing qualities such as text in a different color or in a larger font."
"Thus, any disclaimers and hyperlinks to Complainants' website does not mitigate the likelihood of confusion with regard to the domain name by young Internet users. Furthermore, Respondent's website uses the same type of imagery and characteristics of Complainants' website thereby increasing the likelihood of confusion among young Internet users."
"Complainants deny Respondent's allegations contained in paragraph 12(2) of the Response. All of the LIMITED TOO trademarks are properly registered in the name of Limco, Inc., and Too, Inc. is the exclusive licensee of all such trademark registrations. Limco Investments, Inc. was the legal predecessor of Complainant, Limco, Inc. A copy of a certification from the Delaware Secretary of State certifying that the Certificate of Amendment of Change of Name was filed with Delaware Secretary of State on April 24, 1994, is attached hereto as Exhibit No. 1. Moreover, Complainant, Limco, Inc., filed it’s change of name with the United States Patent and Trademark Office, and printouts from the Trademark Access database demonstrating such filing are attached hereto as Exhibit No. 2. Thus, U.S. Registrations Nos. 1,492,347, 1,726,609 and 1,636,474 are properly registered to Complainant, Limco, Inc."
"The actual domain name, <limitedtooonline.com>, is confusingly similar to Complainants' trademark and contains no distinguishing words to indicate to Internet users that the domain name itself is separate from Complainants’ trademark. The only difference between the domain name and Complainants' trademark is the word "online" which is a generic term defined as, "the condition of being connected to a computer or a telecommunications system. The term is frequently used to describe someone who is currently connected to the Internet."
"Thus, the use of the term "online" in connection with Complainants' trademark as a domain name merely connotes to Internet users that Complainants are "on the Internet". Young Internet users who are seeking Complainants' website are likely to be confused that the domain name, <limitedtooonline.com>, is affiliated with or sponsored by Complainants."
"There is no term in the <limitedtooonline.com> domain name that suggests to Internet users that Respondent's domain name is a fan club domain name, website or that it is operated by Respondent, such as the inclusion of her name, for example "laurenswebpage.com", which is currently available for registration as demonstrated by Verisign's whois query database. A printout of the whois query database result is attached hereto as Exhibit No. 3. Furthermore, Respondent' s inclusion of a disclaimer that was only implemented after Respondent received Complainants' cease and desist letters, does nothing to stop the likelihood of confusion with respect to the domain name itself. Please see paragraph 8 of this Reply."
"In response to Respondent's allegations contained in paragraph 12(3) of the Response, Complainants claim ownership to the LIMTED TOO Mark. Complainants have not claimed ownership to the word ONLINE. As stated in paragraph 10 of this Reply, Complainants claim that the <limitedtooonline.com> domain name is confusingly similar to Complainants' LIMITED TOO Mark. In addition, the numerous foreign trademark registrations of LIMITED TOO demonstrate that Complainants are well-known and famous throughout the United States and abroad and have expended considerable sums of money to protect their mark domestically and internationally."
"Currently, Respondent uses yellow daises on her website. A printout of Respondent's current website is attached hereto as Exhibit No. 4. The five-point daisy is part of Complainants' trademark design and is used extensively by Complainants in their stores, on their website and in their catalog. The five point daisy is incorporated into Complainants U.S. Registration No. 2,243,565 and is shown on Complainants' website in Exhibit No. 5 to the Complaint. Thus, Respondent continues to use imagery that is similar to Respondent's trademark which increases the likelihood of confusion that there is an association or affiliation between Respondent's domain name and Complainants' Mark and domain name."
"Respondent's claim that Complainants did not provide a copyright registration for their website is irrelevant because Complainants have never asserted a copyright infringement claim, Complainants have asserted a trademark claim. Complainants have alleged that Respondent's website incorporated portions of Complainants' website and that Respondent uses similar imagery in her website as the imagery contained in Complainants' website. Thus, the similarity between Complainants' and Respondent's websites increase the likelihood of confusion that Internet users believe that Respondent and Respondent's domain name are affiliated and/or associated with Complainants."
"In addition, Complainants admit that Respondent modified her website after she received the cease and desist letters from the Complainants' legal counsel. However, Respondent reactivated the domain name knowing that Complainants objected to her ownership of the domain name. Respondent also claims that there is only one web page namely, <limitedtooonline.com>, and that subsequent web pages are actually connected to "www.eccentrix.com/misc.limitedtoo/enter.html". There are no indications to Internet users that they are entering a new web page at a new website address, rather, Internet users navigate Respondent's website by clicking on hyperlinks that automatically continue to discuss Limited Too and use the same imagery."
"In response to the allegations contained in paragraph 12(20) of the Response, Respondent was aware of Complainants and their trademark at the time Respondent registered the trademark. While Respondent may not have intended any malice to Complainants, Respondent registered the domain name that incorporated Complainants' registered LIMITED TOO Mark. Even though Respondent may not have represented herself as being affiliated with Complainants, Internet users may associate Respondent and her website with Complainants because the domain name is confusingly similar to Complainants' Mark."
"In addition, Respondent may have not have received any financial gain as a result of operating the website, but Respondent's use of Complainant's Mark as part of her domain name dilutes the distinctiveness of Complainants' Mark. Thus, Complainants are being injured because of the likelihood of confusion that Respondent's domain name and website are somehow affiliated or connected with Complainants."
"Complaints acknowledge that Respondent has never offered to sell the domain name to Complainants."
6. Discussion and Findings
6.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.3 Based upon the numerous U.S. and foreign trademark registrations to the LIMITED TOO mark, and the name change documents submitted, the Complainants clearly have rights in the mark.
6.4 Complainants assert that the domain name <limitedtooonline.com> is confusingly similar to the LIMITED TOO mark. Complainants argue that the domain name incorporates the registered mark in its entirety and that the addition of the generic word "online" does not alleviate the confusion.
6.5 The Panel agrees with the Complainants that the addition of the word "online" would not alleviate any confusion. As pointed out by the Complainants, the logical inference from the <limitedtooonline.com> domain name is that Limited Too is online.
6.6 The Panel finds that the <limitedtooonline.com> domain name is confusingly similar to the LIMITED TOO mark, and that the Complainants have established they have rights in the LIMITED TOO mark, pursuant to paragraph 4(a)(i) of the Policy.
6.7 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(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 (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 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.
6.8 There is no evidence in the record that would indicate that Respondent ever used or prepared to use the domain name in connection with a bona fide offering of goods or services, or that Respondent has ever been commonly known by the domain name.
6.9 Respondent does not own any state, federal, or foreign trademark registrations for the LIMITED TOO mark or for any similar mark. Respondent does not have a license agreement with Complainants, nor have Complainants granted Respondent authorization to use the LIMITED TOO mark or any portion of its website.
6.10 Respondent argues, however, that it is a Limited Too enthusiast promoting Limited Too girls fashions, that it is not required to hold a registered trademark before obtaining an available domain name, that it purchases products from Complainants, and that Complainants did not provide proof of copyright registrations to their website, which Respondent copied.
6.11 None of these "facts" provide respondent with a legitimate noncommercial or fair use of the domain name. Respondent argues that its "initial site offered services to allow young girls to chat about Limited Too products and share other information about Limited Too fashions." While Respondent and its members have the right to express their views about Limited Too products, the right "is not the same as the right to use another's name to identify one's self as the source of those views." Monty and Pat Roberts, Inc. v. Bill Keith, WIPO D2000-0299.
6.12 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <limitedtooonline.com>, pursuant to paragraph 4(a)(ii) of the Policy.
6.13 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b) states in part:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
6.14 Complainants argue that bad faith is established primarily because: (1) Respondent copied portions of their website and used those portions in its own website located at <limitedtooonline.com> and (2) Respondent violated her Registration Agreement with Namesecure.com because she is a minor.
6.15 In their Reply, Complainants acknowledges that "Respondent may not have intended any malice to Complainants" and that "Respondent may have [sic] not have received any financial gain as a result of operating the website." Complainant also acknowledged "that Respondent does not own <limitedtooonline.ent>, org or info" and that "Respondent has never offered to sell the domain name to Complainants."
6.16 Although Complainants may have a cause of action against Respondent for copyright infringement, Complainants have not presented any evidence that the copying of its website by the twelve year old Respondent was the result of anything but ignorance of the law. The same can be said for the Respondent's execution of the domain name registration agreement. Neither of these acts, when considered in light of the entire record before the Panel, establish that Respondent registered and is using the domain name in bad faith.
6.17 It should be emphasized that a finding of no bad faith under paragraph 4(b) means only that the streamlined dispute-resolution procedure is not available and that the dispute may be a ‘legitimate’ one that should be decided by the courts. See Metabolife International v. Spectrum Labs, WIPO Case No. D2000-0509.
6.18 The Panel finds the Complainants have failed to establish that the Respondent registered and used the domain name <limitedtooonline.com> in bad faith, pursuant to paragraphs 4(b) of the Policy.
As the Complainants, Limco, Inc., Limtoo, Inc., and Too, Inc., have not proven that Respondent, Lauren Rogers, registered and used the domain name <limitedtooonline.com> in bad faith, within the meaning of paragraph 4(a) of the Policy, the Complainants' request for transfer to it of the domain name <limitedtooonline.com> is denied.
R. Eric Gaum
Dated: November 12, 2001