ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
Limited Stores, LLC v. Big Fest LLC
Case No. LRO2013-0049

1. The Parties
Complainant/Objector is Limited Stores, LLC of New Albany, Ohio, United States of America, represented by
Frost Brown Todd LLC, United States (“Objector”).
Applicant/Respondent is Big Fest LLC of Bellevue, Washington, United States, represented by The
IP & Technology Legal Group, P.C. d/b/a “New gTLD Disputes”, United States (“Applicant”).

2. The applied-for gTLD string
The applied-for gTLD string (the “String”) is <.limited>.

3. Procedural History
The Objection was filed with the WIPO Arbitration and Mediation Center (the “WIPO Center”) on
March 13, 2013 pursuant to the New gTLD Dispute Resolution Procedure (the “Procedure”).
In accordance with Article 9 of the Procedure, the WIPO Center has completed the review of the Objection
on March 25, 2013 and has determined that the Objection complies with the requirements of the Procedureand the World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal
Rights Objections (the “WIPO Rules for New gTLD Dispute Resolution”).
In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified Applicant of the
Objection, and the proceedings commenced on April 18, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Response was filed with the WIPO Center on May 18, 2013.
The WIPO Center appointed Robert A. Badgley as the Panel in this matter on June 19, 2013. The Panelfinds that it was properly constituted. The Panel has submitted the Statement of Acceptance andDeclaration of Impartiality and Independence, as required by the WIPO Center to ensure compliance with
Article 13(c) of the Procedure and Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution.
On June 28, 2013, Objector submitted an unsolicited Reply Brief with new exhibits. On July 4, 2013,
Applicant objected to Objector’s unsolicited filing. The Panel read these supplemental materials but did not
find them to make any notable difference to the disposition of this case.

page 2

4. Factual Background
Applicant is a subsidiary of Donuts Inc. According to the Executive Vice President of Donuts Inc., thecompany’s management has substantial experience in the domain name business. Donuts Inc. was formed“to acquire and operate new generic top-level domains under ICANN’s new gTLD program that launchedofficially in July 2011.” One stated goal of Donuts Inc. is to “increase competition and choice in the domainname space.” Applicant and its Donuts affiliates applied for 307 new TLDs (spending roughly USD 57 million
in the process), and “deliberately chose common words from the dictionary so that consumers could makeuse of the gTLDs in accordance with the meanings they ascribe to those words.” Donuts claims to haveraised more than USD 100 million toward these business aims.
As respects the <.limited> string in particular, Applicant wrote in section 18(a) of its application:“This TLD is a generic term and its second level names will be attractive to a variety of Internet
users. (…) The .LIMITED TLD will be attractive to a very broad and diverse group of registrantsthat may include companies and non-profits in multiple international and intra-country jurisdictions
that use the “limited” term as a corporate or organizational identifier. It would be further available
to companies in jurisdictions that may later adopt this moniker. The “limited” term is widely
utilitarian, as evidenced by various international applications – for example, separate from theircontext as incorporated entities, organizations have used the “limited” term to refer to various
products and services…”
Applicant also wrote in that part of the application: “in the case of the known clothing retailer, we would work
to reserve some [second-level] names that arguably could interfere with the rights of that entity.”
Objector is a fashion retailer offering clothing and accessories at over 250 retail stores in the United Statesand in 90 countries via the Internet. Objector’s mark THE LIMITED has been registered in numerous
countries and jurisdictions to identify and distinguish Objector’s clothing and accessories. The worldwide
sales of THE LIMITED goods over the past 20 years exceed USD 10 billion.
Objector spends tens of millions of dollars each year advertising and promoting its THE LIMITED clothingapparel and accessories, including USD 13 million during the past five years to promote its e-commerce
activities. Objector’s net sales over the past five years of THE LIMITED goods via the Internet exceed
USD 150 million.
Objector’s online presence is centered at the domain name <thelimited.com>. In 2012, that website received
more than 25 million visits. The periodical Women’s Wear Daily reportedly counted THE LIMITED amongthe 100 most recognized consumer brands in the year 2012.
Additional facts will appear in context in the discussion that follows.

5. Parties’ Contentions
A. Objector
Objector raises arguments under each of the eight non-exclusive factors relevant to a determination under
the Procedure, the principal points of which are set forth below in the respective discussion of each of thosefactors.
B. Applicant
Applicant’s main points under the eight factors will also be reflected in the context of the discussion below.

page 3

6. Discussion and Findings
For the reasons set forth below, the Panel concludes that this Legal Rights Objection should not besustained.
Objector bears the burden of proof. ICANN New gTLD Applicant Guidebook (“Guidebook”), Section 3.5.
The prefatory comments to the eight factors to be considered by a Panel under the LRO Procedure state that
the Panel:“… will determine whether the potential use of the applied-for gTLD by the applicant takes
unfair advantage of the distinctive character or the reputation of the objector’s registered or
unregistered trademark or service mark (‘mark”), … or unjustifiably impairs the distinctive
character or the reputation of the objector’s mark …, or otherwise creates an impermissible
likelihood of confusion between the applied-for gTLD and the objector’s mark…”
Guidebook, Section 3.5.2.
The use of the terms “unfair,” “unjustifiably,” and “impermissible” as modifiers, respectively, of “advantage,”“impairs,” and “likelihood of confusion” in Section 3.5.2 of the Guidebook suggests that there must be
something more than mere advantage gained, or mere impairment, or mere likelihood of confusion for an
Objection to succeed under the Procedure. It seems, rather, that there must be something untoward – even
if not to the level of bad faith – in the conduct or motives of Applicant, or something intolerable in the state ofaffairs which would obtain if Applicant were permitted to keep the String in dispute.
The Guidebook sets forth eight non-exclusive factors which should be considered by the Panel when
applying the Section 3.5.2 standards to the facts of this case. Before walking through the eight factors,
however, the Panel must raise one fundamental point that colors its consideration of this entire case.
Objector’s mark is THE LIMITED, whereas the string is <.limited>. Typically, the presence or absence of adefinite article (here, “the”) makes 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 theString, Applicant’s claim to legitimacy is much more plausible and stronger, and the prospect of confusion is
reduced.
It is worth noting that Objector consistently refers to its mark as THE LIMITED throughout the record in this1case. Objector’s numerous trademark registrations throughout the world are for THE LIMITED. The
considerable advertising and marketing expense incurred each year by Objector, as reflected in the affidavit
of its General Counsel, is for THE LIMITED. The signage and labels used by Objector at its retail outlets andon its wares, as set forth in the annexes to the Objection, are invariably expressed as THE LIMITED.
Objector’s Internet activities also confirm that it regards its mark as THE LIMITED, not LIMITED. Objector’s
online business is conducted at a website located at <thelimited.com>. Objector refers to its ownership of “arobust domain portfolio, including thelimited.com.” Objector also lists eight other domain names with countrycode TLDs, such as <thelimited.ca>. Each of these eight domain names with a ccTLD contains the secondlevel domain name “thelimited.” None of the domain names in Objector’s “robust” portfolio, at least as far as
this record is concerned, includes a second-level domain name consisting of “limited” by itself. Objector also
points out that it obtained a registration block of the domain name <thelimited.xxx>. Again, there is nosuggestion in the record that Objector tried to block <limited.xxx>.

1

It appears that, among Objector’s hundreds of worldwide trademark registrations, there are two for the word mark LIMITED in

Australia and possibly one for the word mark LIMITED in New Zealand. Even so, in documents assigning trademark rights to Objector,
the Australian marks are designated as THE LIMITED and not LIMITED. Further, there is no evidence in the record concerning
Objector’s efforts, if any, to use the mark LIMITED (standing alone) in Australia or New Zealand (or anywhere else, for that matter).

page 4
The record is devoid of any evidence that Objector has actually used LIMITED as a mark in commerce, or
affixed the sole word LIMITED to any of its goods, or spent any money marketing its wares or services under
the sole word LIMITED. From all of this the Panel concludes that Objector understands its trademark to be
THE LIMITED, not LIMITED.
If the string in dispute in this case were <.thelimited>, Objector would be in a much stronger position. As it
stands, however, Objector cannot escape the reality that “limited” is a common word with various meanings,
and as such it is possible for someone to make a legitimate use of the string <.limited>. Having made thispreliminary observation, the Panel will examine whether Applicant’s anticipated use of this String is tolerable
under the standards governing this Procedure.
i. Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or
meaning, to Objector’s existing mark.
Objector’s mark is THE LIMITED and the string is <.limited>. Objector is incorrect to argue that the mark andthe String are identical; the word “the” appears in the mark but not in the String. The Panel is prepared tofind the mark and the String similar, but, as suggested above, the definite article “the” will figure importantlyin the analysis of other factors under the Procedure.
The Panel concludes that the mark and the String are similar and therefore this first factor weights in favor of
Objector. The Panel observes here that “similarity” under this factor does not necessarily mean confusing
similarity.
ii. Whether Objector’s acquisition and use of rights in the mark has been bona fide.
Applicant does not seriously dispute for purposes of this proceeding that Objector’s use of, and rights in, its
THE LIMITED mark are bona fide. Rather, Applicant tries to recast the focus of this factor by arguing that
Objector’s use of its mark is too narrow (largely confined to younger women in the United States) to implicate
the string in dispute. The Panel rejects Applicant’s attempted reconstruction of this factor. Objector has
doubtless made bona fide use of its mark, and hence the Panel finds that this factor weighs in favor of
Objector.
iii. Whether and to what extent there is recognition in the relevant sector of the public of the sign
corresponding to the gTLD, as the mark of Objector, of Applicant or of a third party.
There is undoubtedly considerable public recognition, at least in the United States, of the mark THE
LIMITED as the source identifier of Objector’s retail stores and fashion wares. However, there is noevidence in the record that the word “limited”, without more, enjoys recognition in the public as a source
identifier of Objector. There is no evidence in the record that Objector’s Internet activities involve LIMITED,
as opposed to THE LIMITED, as a source identifier.
Objector states (with emphasis added): “The Limited submits that consumers of retail services, clothingapparel and accessories associate LIMITED, whether standing alone or with the definite article ‘the,’ solely
with The Limited.” This assertion is unsupported by actual evidence, and on its face does not appear
plausible (especially as respects the universe of “consumers of retail services”). If Objector had any
evidence to support its assertion that the word “limited” – “standing alone” – was associated by the relevant
consuming public “solely” with Objector, it was incumbent on Objector to provide such evidence.
As respects Applicant, there is no evidence that the word “limited” is associated in the public mind with
Applicant.
The word “limited” is a common word with multiple meanings. As the parties acknowledge, the word canrefer to a confined or scarce quantity, such as a “limited edition” or “limited options.” It is also a common
legal term to refer to “limited liability,” i.e., a restriction on one’s ability to sue certain persons who own ormanage a business. It is common ground between the parties that various businesses append to theirpage 5company name the term “limited,” or its abbreviation “ltd.,” or “LLC” (limited liability corporation), or “LLP”(limited liability partnership), and so forth. Hence, the Panel finds that there are numerous third parties who
use the term “limited” in connection with a company name or in some other descriptive sense.
Applicant submitted an affidavit summarizing a consumer recognition survey to assert that “limited” is widely
perceived as an intangible concept and not as Objector’s trademark. Much of Objector’s Reply Brief isdevoted to attacking this affidavit and survey. The Panel has accorded little or no weight to the survey,
chiefly because (as Objector also noted) the affidavit provides inadequate information about the context ofthe survey exercise. While the methodology behind this survey may well have been sound, the Panel cannot
so conclude because of the unclear foundation on which it was presented.
The Panel finds that this factor is inconclusive in its disposition of this case.
iv. Applicant’s intent in applying for the gTLD, including whether Applicant, at the time of application
for the gTLD, had knowledge of Objector’s mark, or could not have reasonably been unaware of thatmark, and including whether Applicant has engaged in a pattern of conduct whereby it applied for oroperates TLDs or registrations in TLDs which are identical or confusingly similar to the marks ofothers.
It is undisputed that Applicant was aware of Objector’s mark at the time Applicant applied for the String. As
noted, in section 18(a) of its application Applicant wrote: “in the case of the known clothing retailer, we would
work to reserve some [second-level] names that arguably could interfere with the rights of that entity.”
Applicant did not elaborate on which names it might “work to reserve” for Objector’s benefit.
Applicant’s parent Donuts Inc. has, directly or through subsidiaries like Applicant, applied formore than 300 gTLDs in addition to the string in dispute. According to Applicant, in section 18(a)of its application “[t]he company intends to increase competition and consumer choice at the top
level. It will operate these carefully selected TLDs safely and securely in a shared resourcesbusiness model.”As respects the <.limited> string in particular, Applicant wrote in section 18(a) of its application:“This TLD is a generic term and its second level names will be attractive to a variety ofInternet users. (…) The .LIMITED TLD will be attractive to a very broad and diverse groupof registrants that may include companies and non-profits in multiple international andintra-country jurisdictions that use the “limited” term as a corporate or organizational
identifier. It would be further available to companies in jurisdictions that may later adopt
this moniker. The “limited” term is widely utilitarian, as evidenced by various international
applications – for example, separate from their context as incorporated entities,
organizations have used the “limited” term to refer to various products and services…”
It is undisputed that Applicant was aware of Objector, the “known clothing retailer,” at the time it applied for
the String. Such awareness, by itself, does not automatically equate to bad faith or some other mischievous
motive for purposes of this proceeding. Rather, the core question is whether Applicant’s intentions here
were bona fide.
The Panel concludes, on the record before it, that Applicant’s intent here was legitimate and in good faith.
Applicant and its corporate family have set about to launch an ambitious Internet business venture. Having
spent roughly USD57 million on the gTLD applications alone, they hope to become a leading registry of
TLDs with potentially popular appeal. The array of TLD strings for which Applicant and its affiliates haveapplied reflects an intention to acquire largely popular and common words that may attract people andbusinesses to pay for an Internet address at one of the Donuts TLDs.
The Panel notes also that Applicant’s stated intentions vis-à-vis the string at issue are corroborated by
Applicant’s other TLD applications for <.ltd>, <.llc>, <.inc.>, and <.corp>.

page 6

Objector notes that Applicant’s parent Donuts Inc. has also applied for the TLD strings <.fashion>, <.coach>and <.express>, and alleges on this basis that Donuts has “future designs for operating gTLDs aimed at the
fashion industry.” Objector does not expressly argue that such registrations constitute, within the meaning of
this fourth factor, “a pattern of conduct whereby it applied for or operates TLDs or registrations in TLDs which
are identical or confusingly similar to the marks of others.”
In any event, Applicant denies having engaged in any such pattern, and the Panel finds this denial plausible.
The words “coach” and “express” both reflect trademarks in the fashion industry, but they also serve as very
common words whose generic use as TLDs is certainly within the realm of imagination. (The Panel is not, ofcourse, making any actual findings as respects those other TLD strings, but discusses them here only
insofar as Objector has raised them as examples of Applicant’s alleged ill motives.)
It also bears noting that Applicant and its affiliates have applied for more than 300 gTLDs and Objector has
mentioned only three of them in this case. Without being exhaustive here, the Panel observes that asampling of the other TLDs applied for by the Donuts family includes: <.art>, <.accountants>, <.agency>,<.food>, <.football>, <.forsale>, <.style>, <.sucks>, and <.supplies>. These common terms appear to beconsistent with a legitimate plan to attract various people and entities to purchase Internet addresses tailoredto their interest or sphere of activity.
In sum, the Panel finds nothing untoward in Applicant’s intent here. This factor favors Applicant.
v. Whether and to what extent Applicant has used, or has made demonstrable preparations to use,
the sign corresponding to the gTLD in connection with a bona fide offering of goods or services or abona fide provision of information in a way that does not interfere with the legitimate exercise by
Objector of its mark rights.
Much of what was said above in connection with the fourth factor is equally applicable here. Applicant
apparently has secured financing exceeding USD 100 million, hired numerous professionals, and applied formore than 300 TLDs in order to operate a suite of TLD registration services.
Objector asserts that Applicant’s anticipated use of the <.limited> string will interfere with its rights in its THE
LIMITED mark. As respects Applicant’s comment in the application that “in the case of the known clothingretailer, we would work to reserve some [second-level] names that arguably could interfere with the rights ofthat entity,” Objector asserts:“Such a proposal is not only unworkable in practice but wholly ineffective to remove thelikelihood of confusion and resulting damage to The Limited due to (a) the consumer
recognition of THE LIMITED throughout the world, (b) the relative scarcity of the use of“Limited” alone in the marketplace as a “corporate or organizational identifier,” and (c) thevirtually unlimited combinations of terms that could be used by third parties to attract
consumers to competing or counterfeit goods.”
As respects (a), Objector has not provided evidence of the consumer recognition of its THE LIMITED mark“throughout the world.” As respects (b), no one has provided evidence in this case as to the extent of use of“limited” as a corporate or organizational identifier.
As respects (c), Objector cites as examples the potential domain names <sales.limited>, <springline.limited>,<runway.limited>, and <catalogue.limited>. The Panel accepts that there is some potential for abuse by third
parties who may register second-level domain names with <.limited> as the TLD. The extent of suchpotential abuse is of course a matter of speculation. Objector will have legal recourse of some kind to curb
particular abuses, should they occur. On a more practical level, because Applicant confirmed in its
application its commitment to “work to reserve” certain names that might be particularly sensitive to Objector,
it would seem logical that Objector could now seek to work with Applicant to reserve or otherwise block someof the most sensitive potential second-level domain names.

page 7

Finally, the Panel observes here that Objector’s very list of unacceptable domain names (if in the hands ofthird parties) includes <sales.limited>. Just looking at that example, it is apparent that Objector’s concerns
might perhaps be somewhat exaggerated. Numerous businesses in various areas of commercial activity indiverse parts of the world might be tempted to register <sales.limited> and legitimately use that domainname because their business happens to conduct sales over the Internet for a limited period. It is not difficult
to imagine many such businesses doing so legitimately and without infringing Objector’s mark in any respect.
This factor weighs in favor of Applicant.
vi. Whether Applicant has marks or other intellectual property rights in the sign corresponding to
the gTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, hasbeen bona fide, and whether the purported or likely use of the gTLD by Applicant is consistent withsuch acquisition or use.
Applicant plans to use the String in a largely generic sense, without possessing corresponding intellectual
property rights. This factor, while not very significant in this case, favors Objector.
vii. Whether and to what extent Applicant has been commonly known by the sign corresponding to
the gTLD, and if so, whether any purported or likely use of the gTLD by Applicant is consistent
therewith and bona fide.
Applicant is not commonly known by the String or any sign corresponding thereto. This factor, like theprevious one, is not very significant in this case but does favor Objector.
viii. Whether Applicant’s intended use of the gTLD would create a likelihood of confusion with
Objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.
The Parties offer their respective analyses under this head on the basis of two of the leading, and largely
overlapping, judicial multi-factor tests developed to determine likelihood of confusion in the United States.
Under the Procedure, no single test is mandated when considering this “likelihood of confusion” factor. The
Panel will address the more substantial arguments set forth by the Parties, as well as the Panel’s own
considerations bearing on this factor.
First, in support of its contention that THE LIMITED mark is “arbitrary and strong,” Objector asserts that
Applicant, in its application, alluded to Objector as “the well-known clothing retailer.” Actually, Applicant used
the phrase “known clothing retailer,” and did not say “well-known.” This may seem a small point, but it
deserves mention when the strength of a trademark is under discussion.
In addition, the Panel observes that, despite describing the mark THE LIMITED as “arbitrary” in the initial
LRO pleading, Objector conceded in its Reply Brief that “’Limited’ is not an arbitrary mark.” These two
assertions underscore the importance of the difference between THE LIMITED and <.limited>.
As discussed above, the mark THE LIMITED and the string <.limited> are similar, though not (as Objector
asserts) identical. The definite article “the” makes a difference in this case. If the string were <.thelimited>,
Applicant’s professed plans for the String would be highly suspect. This is because limited liability
businesses do not use the term “the limited” (or an abbreviation or derivation thereof) in their company
name. Also, the concept of exclusivity or scarcity conveyed by the term “limited” would often lose its force or
meaning if the word “the” were appended to “limited.” For example, the phrase “she has limited options”
means something different from “she has the limited options.”
In the absence of the definite article “the” in the String, however, Applicant’s proposed use of the String isplausible and legitimate, and the likelihood of confusion between Objector’s mark and the String is greatly
reduced. There is simply no viable evidence in the record to suggest that significant source confusion –among consumers or non-consumers who use the Internet – will ensue if Applicant carries out its plans.

page 8The Panel also notes that Objector’s commercial activity is largely confined to the sale of women’s clothing
and accessories at retail stores in the United States and via the Internet. Outside of that field of activity,
there are myriad legitimate third-party uses of the term “limited” which cause no confusion with Objector’s
THE LIMITED mark.
It is also useful to recall in this connection that, under Section 3.5.2 of the Guidebook, the relevant concern iswith an “impermissible likelihood of confusion.” Even if Objector were to demonstrate a likelihood ofconfusion here, it would also have to demonstrate an impermissible likelihood of confusion. In the Panel’sview based on this record, Objector has done neither.
The Panel concludes that this eighth factor under Section 3.5.2 of the Guidebook weighs in favor ofApplicant.

7. Decision
For the foregoing reasons, the Objection is rejected.

[signed]Robert A. Badgley
Sole Panel Expert
Date: July 15, 2013