For The Limited, “The” comes back to haunt it in another domain case
The brand is The Limited, not Limited.
There were many reasons that new TLD applicant Donuts prevailed in a legal rights objection filed by fashion retailer Limited over .limited.
One of those was that “The” is a big part of the The Limited brand. “The Limited” does not equal “Limited”.
This topic has come up again in a UDRP that Limited Stores filed against the owner of LimitedCoupon.com.
In determining if LimitedCoupon.com is confusingly similar to a mark in which Limited Stores has rights, the panel wrote:
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.
Ultimately, the panel did not rule on confusing similarity because it ruled against Limited Brands on the issue of if the domain name was registered in bad faith. And here, the panelist had some harsh criticism for Limited’s lawyers:
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 panel ruled that “Limited Coupon” can be considered generic. Limited lost the case, despite the domain name owner not responding.
It’s a good think Facebook “dropped the The”.