I bet the Complainant was surprised.
The first hurdle for a company to win a UDRP filing is to show that the domain is identical or confusingly similar to the mark in question.
Most panelists rubber stamp this requirement, even when it strains credulity.
But a recent case failed on this first hurdle despite it being evident that the domain owner is up to no good.
RK Holdings runs over 100 hardware and sporting goods stores under the Rural King brand. One of its brands is Lincoln Outfitters.
It filed a complaint against Lincolntters.com. It’s obvious why the person registered the domain: it resolves to a site with Rural King’s logo that sells goods that purport to be Lincoln Outfitters brand.
But panelist Debrett Lyons determined that the first element wasn’t met:
…Panel observes that the great majority of English words containing a double “t” position a vowel before the double consonant. Accordingly, the name, “Lincoln”, may be recognised apart from the letter string, “tters”. However, the Panel finds that it is highly unlikely that those letters would be perceived as part of the word, “fitter(s)”, less still the word, “outfitter(s)”. To reason that perception of “Lincoln” would trigger an understanding that “tters” was a truncation of “outfitters” would be to assume prior knowledge of the trademark and it is settled that the reputation of a trademark should be disregarded in making the assessment of confusing similarity. Otherwise, the compared terms are quite different, and the Panel finds that lincolntters may only be seen by many as a meaningless collocation of letters.
The Complainant might be shocked by this result, but it might also be to blame. Lyons noted that:
Complainant makes no submissions regarding the confusing similarity between the (relevant) trademark, LINCOLN OUTFITTERS, and the domain name and so the Panel is left to make that assessment for itself.
Trademark Lawyer Law Firm in Michigan represented RK Holdings.
