Donuts has scored its second victory against a large fashion brand.
The company has successfully defended itself in a Legal Rights Objection brought by Limited Stores, LLC for the top level domain .Limited. It recently won a case brought by Express for .express as well.
The .limited case was determined by Robert A. Badgley, who was not the same panelist for the .express objection.
Donuts’ application for the .limited domain claims that likely registrants will include companies that use “Limited” as a corporate identifier. Somewhat uniquely, its application also provides some protections to the clothing retailer that objected to its application:
“…in the case of the known clothing retailer, we would work to reserve certain names that arguably could interfere with the rights of that entity.”
That was one of the solutions I mentioned that may resolve Express LLC’s concerns about the .express top level domain.
Badgley noted that one of the key drivers in his decision is that the objector’s mark is The Limited, not Limited:
Objector’s mark is THE LIMITED, whereas the string is .limited. Typically, the presence or absence of a definite article (here, “the”) make s little or no difference in trademark matters. However, in the present case the Panel believes that the definite article “the” makes a great deal of difference. Without the “the” in the String, Applicant’s claim to legitimacy is much more plausible and stronger, and the prospect of confusion is reduced.
He also noted that Limited Stores, LLC uses TheLimited.com as its website rather than Limited.com. The company owns Limited.com but forwards it to its main web address.
The full decision is published here.