{ "case_number": "CAC-UDRP-104767", "time_of_filling": "2022-08-03 09:18:01", "domain_names": [ "kiltandkilts.com " ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Highland Kilt Company LLC " ], "complainant_representative": "Dr. Daniel Dimov (Dimov Internet Law Consulting)", "respondent": [ "Saad Aftab" ], "respondent_representative": null, "factual_background": "Complainant states that it has been using the HIGHLAND KILT Trademark since 2007 and that it operates a website using the domain name that offers for sale kilts, clothing, and accessories. It states further that it had a recent encounter with Respondent in a UDRP proceeding for the domain name : Highland Kilt Company v. adnan younas, CAC 104199 (ADR.eu December 29, 2021) (the “Highland Kilt Store” case). Respondent did not appear in that case and, as the Panel in that case found that the evidence supported cybersquatting, it issued a decision awarding Complainant the Disputed Domain Name.\r\n\r\nIn this case, Complainant alleges that is confusingly similar HIGHLAND KILT for several reasons further discussed below. It also contends that “both [the HIGHLAND KILT Trademark and the Disputed Domain Name] contain element(sic) ‘andkilt’” ---the \"and\" being the three final letters of \"Highland.\"", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the Disputed Domain Name.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\nHaving prevailed in the Highland Kilt Store case, Complainant alleges in this case that Respondent simply turned around and registered another confusingly similar domain name, (hereinafter, \"the Disputed Domain Name\"). The website to which the Disputed Domain Name resolves offers kilts and accessories under the name of “Highland Kilts Store.” Again, as in the Highland Kilt Store case, the Respondent (according to Complainant) is continuing to use Complainant’s trademark although not in the domain name this time but on its website to sell kilts and accessories.\r\n\r\nComplainant contends that Respondent lacks rights or legitimate interests in the Disputed Domain Name in that it has not authorized Respondent to use of the HIGHLAND KILT Trademark, that Respondent is not known by the name of the Disputed Domain Name, and that the “Domain Name merely refers to an online store [. . .] selling products. Furthermore, the Domain Name is used with the intent to misleadingly divert consumers by misleading the customers of the Complaint into believing that the Website is associated with the Complainant’s trademarks.”\r\n\r\nComplainant also states that Respondent has copied its copyright protected photographs. It draws from this litany of allegations that Respondent registered the Disputed Domain Name “intentionally attempt[ing] to attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and or the products sold through the Respondent’s website.” In short, Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith.\r\n\r\nRESPONDENT:\r\nThis time around is different, however. Respondent has now appeared to defend its registration of with an explanation of its default in the Highland Kilt Store case. It states that it did not know about the UDRP until its website disappeared and it learned about the transfer of . It alleges that it is a Pakistani producer of kilts and accessories. It includes in its Response a copy of a “Taxpayer Profile Inquiry” from the Pakistani Federal Board of Revenue that shows Respondent is a registered business in Pakistan under the name of “Highland Kilt Store” registered July 20, 2020.\r\n\r\nThe Panel has visited the parties’ websites. They are similar in that both are offering to sell kilts and accessories. The illustrations of kilts are identical or closely so. But the websites are also different in their colors and designs. The word “Highland” in Complainant’s website is a plain word, whereas the same word in Respondent’s website has a figurative design that replaces the letters “igh” in H - - - LAND. I will address this issue further below in discussing rights and legitimate interests.\r\nWith regard to photographs, Respondent states that “As far as Complainant's claim of copying images is concern, we took those images from open and free source.”\r\n\r\nSUPPLEMENTAL SUBMISSIONS\r\n\r\nCOMPLAINT\r\nComplainant submitted a supplemental submission in which it explains that it “was not able to submit the evidence prior to the respondent’s submission because the complainant was not aware of respondent’s allegations that the respondent is registered in Pakistan and conducts business activities in Pakistan.” Complainant is correct that it could not have known of Respondent’s business filing and its Supplemental Submission is accepted in that connection. The Panel has considered it to the extent that it addresses matters that could not reasonably have been included in Complainant’s initial submission. However, much of the supplemental submission is a repetition of its argument in the complaint and adds nothing new that could not have been said in the complaint.\r\n\r\nIn summary, Complainant argues that “Despite the allegations that the respondent is registered in Pakistan and conducts business activities in Pakistan, the respondent has added to his web-site an address in the United States. Thus, the visitors of his website will be misled into believing that the respondent conducts business activities in the United States.” Complainant also states that it is “[m]ost likely [that] at the time of registering the disputed domain name, the respondent was aware of the complainant’s trademark, but decided to register the disputed domain name to benefit from the complainant’s trademark.”\r\nComplainant also repeats an allegation in the Complaint that the photographs on Respondent’s website are copyright infringements.\r\n\r\nRESPONDENT\r\nRespondent responded to Complainant's supplemental submission with particularity and is accepted into the record. It states in material part that it is “based in Pakistan but our website is not intended for any specific region or country. Our offering of goods is for all customers around the globe, and this world includes the USA too.” It states that it has a US address for US-based customers and a UK address for UK-based customers. It states that “[b]eing a service provider it helps in reducing the cost and time,” adding that “[b]y adopting this method we tried to facilitate our customers, facilitating customers is not a sin.” Respondent also states that it uses stock photographs.", "rights": "For the reasons discussed further below, the Panel finds \r\n\r\n1. The Disputed Domain Name is not identical or confusingly similar to the HIGHLAND KILT Trademark; ", "no_rights_or_legitimate_interests": "2. Respondent has demonstrated that it has rights and legitimate interests in the Disputed Domain Name; and ", "bad_faith": "3. the Disputed Domain Name was not registered and is not being used in bad faith.", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Rejected", "panelists": [ "Gerald M. Levine, Ph.D, Esq." ], "date_of_panel_decision": "2022-09-02 00:00:00", "informal_english_translation": "Complainant states that it has a trademark for the term HIGHLAND KILT COMPANY registered with the US Patent and Trademark Office May 14, 2019, US Reg. No. 5,748,766 in connection with “tartan fabrics” and “kilts, t-shirts, tartan kilts” (the “HIGHLAND KILT Trademark”). The words “Kilt Company” are disclaimed. Complainant also alleges common law rights dating to 2007 although the Certificate of Registration which it attached to its complaint shows a first use in commerce as December 4, 2015.", "decision_domains": { "KILTANDKILTS.COM": "REJECTED" }, "panelist": null, "panellists_text": null }