Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent has registered and is using the domain name in bad faith.
A. Identical or Confusingly Similar, Para. 4(a)(i)
There are two elements to this first requirement: a) that complainant has a trademark, and b) that the Disputed Domain Name is either identical or confusingly similar to that mark. Here, Complainant has demonstrated that it has a trademark for the term HIGHLAND KILT COMPANY. It is also evident from Complainant's proof that its rights under common law principles for the term HIGHLAND KILT COMPANY precede by several years its USPTO registration. However, this does not help its case. The Certificate of Registration indicates that the words "Kilt" and "Company" are disclaimed, as they must be in that "Kilt" is purely descriptive of the goods Complainant offers and "Company" is simply its corporate form.
Determining whether a disputed domain name is identical or confusingly similar to a complainant’s mark involves a side-by-side comparison of disputed domain name and mark. Here, the domain name is “Kilt and Kilts.” While it contains the word Kilt in both its singular and plural forms the word is “so generic or descriptive that the objective bystander could not responsibly conclude that [it was] evoking the trademark," Skycam, Inc. v. Administrator, Domain / Vertical Axis, Inc., FA1102001372311 (Forum April 29, 2011); also NaturaLawn of America, Inc. v. Jeff Edwards, FA1102001372111 (Forum March 16, 2011). The Disputed Domain name in no way evokes or conjures up the HIGHLAND KILT Trademark. There can be no claim to exclusive rights of terms that others may need to use to describe their goods in the marketplace. The dominant element of the mark is HIGHLAND, not "Highland Kilt."
Complainant attempts to overcome this problem by arguing that “confusion is caused by the use of the words ‘HIGHLAND KILT STORE’ by the Respondent and by the use of a Domain Name that includes the elements “kilt”, “and”, and “kilts”, all of which (except “s”) are included in the Complainant’s trademark.” The domain name is similar only with respect to the word "Kilt" but Complainant cannot claim monopoly rights to that word. This argument (or at least a part of it) may have been persuasive in the Highland Kilt Store case, but it is not persuasive in this case.
For these reasons, the Panel finds that Complainant has not succeeded on Para. 4(a)(i).
B. Rights and Legitimate Interests, Para. 4(a(ii)
Complainant nevertheless argues that Respondent lacks rights or legitimate interests. In rebuttal Respondent proffers evidence that as a registered company in the business of producing kilts it has both a right and a legitimate interest. Some of Complainant’s argument replicates its claims in the Highland Kilts Store Case. For example, it states that the “Domain Name merely refers to an online store [. . .] selling products.” While this may have been the case with <highlandkiltsore.com> it cannot be carried over as an argument for <kiltandkilts.com>.
The Panel finds that Complainant has not presented a prima facie case that Respondent lacks rights or legitimate interests. Rather, Respondent has appeared with a full rebuttal of Complainant's contentions. It is obvious that the parties are competitors. It is equally clear that they are operating in a crowded field. Who would ever have imagined that there are so many companies manufacturing kilts? But so it appears from Respondent's evidence and a review of kilt websites referred to therein.
The UDRP provides in Para. 4(c) three circumstances that if any one of which is present "shall demonstrate your rights or legitimate interests to the domain name for the purposes of Paragraph 4(a)(ii). These are
(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 non-commercial 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.
Respondent has shown that it is a Pakistani company in the business of producing kilts. The fact that its website under the tab “About Us” shows a US address for the sale of its goods and does not identify itself as a Pakistani business is not evidence that it lacks rights or legitimate interests. If the US address is material, it would be Complainant’s burden to explain why it is as it relates to the Disputed Domain Name. On the whole, the Panel finds there is no merit to Complainant’s theory that because the Disputed Domain Name includes the word "kilt," it must therefore follow that Respondent lacks rights or legitimate interests. First of all, the word “kilt” describes the goods Respondent offers, and secondly Respondent is conducting a business registered in Pakistan that produces kilts.
The Panel finds that the Disputed Domain Name is being used in connection with a bona fide offering of goods or services (Para. 4(c)(i)). Para. 4(c)(ii) (the “commonly known as” defense) does not apply to <kiltandkilts.com>, although based on Respondent’s registered business name it might have been persuasively invoked in the Highland Kilt Store case had it appeared and argued its case.
While suspicion is understandable, the Panel has no doubt that Respondent is engaged in a bona fide business in the field of kilts albeit as a competitor of Complainant and that it has a registered business in the name of “Highland Kilts Store.” It therefore has both rights and legitimate interests to market its wares through the Disputed Domain Name.
For these reasons, Complainant has not succeeded under Para, 4(a)(ii).
C. Conjunctive Bad Faith, Para. 4(a)(iii)
Complainant argues that "[s]ince the Complainant and the Respondent operate in the same field, the Respondent was likely aware of the Complainant’s trademark and registered the Domain Name to prevent the Complainant from reflecting the trademark in a domain name that is confusingly similar to the Complainant’s trademark." There are three problems with this argument. The first is that since there are many kilt companies on the Internet offering kilts and accessories it is equally likely that Respondent had no specific knowledge of Complainant, or if it did, that it was simply that it was one of many competitors. The second problem is that the Disputed Domain Name is not identical or confusingly similar to Complainant's mark so it cannot be said that its registration "prevent[ed] the Complainant from reflecting the trademark in a domain name." And third, Complainant has no right to the Disputed Domain Name as it does not reflect its mark.
In contrast to the Highland Kilt Store case in which the disputed domain name was virtually identical to the trademark, here the only identity is with the word “Kilt” which, even if had not been disclaimed “could not be regarded as associated exclusively with the Complainant in the minds of consumers,” Deep Focus Inc. v. Domain Admin, Abstract Holdings, International LTD, D2018-0518 (WIPO June 6, 2018) (for the name “Cassandra”). Having a trademark comprised in part of a common word that has also been disclaimed does not grant monopoly rights to prevent others from using the alleged offending word.
It is conspicuous that Respondent does not deny knowledge of Complainant, thus it is more likely than not it was actually aware of Complainant but not necessarily of its trademark. The question, though, is at what point in time did Respondent have that knowledge. Certainly, Respondent knew from its after-the-fact examination of the complaint in the Highland Kilt case, but whether it was motivated in the first instance in 2020 to call itself HIGHLAND KILT STORE is in doubt. See Harvest Dispensaries, Cultivations & Production Facilities, LLC v. Rebecca Nickerson / Rock City Harvest, FA2004001892080 (Forum June 26, 2020) (“Although the Panel harbors doubts that Respondent would be oblivious to Complainant's position within the cannabis market mere doubt does not satisfy the burden of proof that rests with Complainant.”). The resolution of this doubt would require more factual development than is possible in a UDRP action, and in any event, it is irrelevant to the disposition of this claim because the domain name is neither identical nor confusingly similar to Complainant’s mark.
Complaint also argues that "the copyright infringement activities of the Respondent and the UDRP case lost by the owner of the domain name HIGHLANDKILTSTORE.COM, it is clear that, before registering the Disputed Domain Name, the Respondent was aware of the Complainant’s trademark and website. Furthermore, at the time of registering the Disputed Domain Name, the trademark was publicly available and a potential bona fide registrant of a domain name should have conducted a trademark search." The problem here, first of all, is that the phrase "kilt and kilts" is distinct from HIGHLAND KILT COMPANY despite the “and” and “kilt” words. “Kilt and kilts” does not conjure up or evoke Complainant’s mark. It is true that Respondent is a competitor, one of many in a crowded field. It is unnecessary to say more about the alleged copyright infringement contention than it is not a subject for consideration under the UDRP. From the Panel’s brief look at kilt companies advertising on the Internet, if Respondent is infringing Complainant’s copyright then so too are the other competitors that appear to be using stock photographs of kilts.
There is also the argument that Respondent is using Complainant’s trademark on its website, but this suggests trademark infringement not cybersquatting, and this theory too, as with copyright infringement claims is outside the scope of the UDRP. The Panel in AutoNation Holding Corp. v. Rabea Alawneh, D2002-0581 (WIPO May 2, 2002) pointed out that “[assertions of trademark infringement are] entirely misplaced and totally inappropriate for resolution in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else”; and Force Therapeutics, LLC v. Patricia Franklin, University of Massachusetts Medical School”, D2017-2070 (WIPO ) (the UDRP “involves a more limited assessment than trademark infringement.” The Panel in dismissing the complaint in Maven Esthetics, LLC v. Diana Roth, The Browtique, D2021-3499 (WIPO December 18, 2021) stated that “it renders no opinion on the issue whether Complainant may have a viable trademark infringement claim under the federal Lanham Act.”
While it is obvious the parties are competitors, the totality of the circumstances before the Panel in this case does not establish that the Respondent registered the Disputed Domain Name in bad faith as that concept is understood under the UDRP; and as a producer of Kilts for an Internet market neither can it be found that the Respondent is using the Disputed Domain Name in bad faith.
For these reasons, the Panel finds that Complainant has not succeeded on Para. 4(a)(iii).
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