DECISION

Gary Ash d/b/a Fences4Less.Com v. Design Dynamix

Claim Number: FA0402000235711

PARTIES

Complainant is Gary Ash d/b/a Fences4Less.Com (“Complainant”), Valley Center, CA, represented by Hani Z. Sayed, of Murphey & Murphey, Pacific Center One, Suite 260, 701 Palomar Airport Road, Carlsbad, CA 92009.  Respondent is Design Dynamix, 2475 Underwood #165, Houston, TX 77030 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fenceforless.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Richard B. Wickersham, Judge, (Ret.) is serving as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 2, 2004; the Forum received a hard copy of the Complaint on February 9, 2004.

On February 6, 2004, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <fenceforless.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 8, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@fenceforless.com by e-mail.

A timely Response was received and determined to be complete on March 5, 2004.

On March 17, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard B. Wickersham, Judge, (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

                        Disputed Domain Name

1.         The following domain name is the subject of this Complaint, pursuant to ICANN Rule 3(b)(vi):

                        <fenceforless.com>

2.         Complainant Fences4Less.Com is one of the largest distributors of aluminum ornamental fencing in the country.  Under the mark FENCES4LESS.COM, Complainant also sells other fencing material such as chain link, vinyl fences, temporary fences, tubing and pipe, automated entry systems, field wire, and tools.  A major portion of the sales, however, are in aluminum ornamentals. Respondent opened their <fenceforless.com> site on or about October 23, 2003 with the sole intent of selling identical aluminum fencing material, with the same exact purpose, under a name that is confusingly similar to our mark  FENCES4LESS.COM.

                        Factual and Legal Grounds

This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix). 

3. I, Gary W. Ash, am the owner of United States Service Mark Application S/N 78/349,621 for the continuous sale of online goods and services in the field of fencing in International Class 35 since July of 1996. Recently, we have received numerous phone messages stating that they have mistakenly reached <fenceforless.com> when they intended to reach us at <fences4less.com>.

 

4. On or about October 23, 2003, Respondent Design Dynamix secured the URL <fenceforless.com>.  Our URL, <fences4less.com> has been used continuously in interstate commerce for the sale of online goods and services in the field of fencing in International Class 35 since July of 1996.

5. Because “FENCEFORLESS.COM” is confusingly similar to “FENCE4LESS.COM” and the products and services bearing the respective marks are being sold through the same channels of trade, it is our position Respondents use of the “FENCEFORLESS.COM” mark will continue to bring confusion, mistake, or deception to the marketplace.

Remedy Sought 

6.         Complainant requests that the Panel issue a decision that the domain name registration be transferred to Complainant, and an award for all Attorney’s fees and filing fee also be awarded.  ICANN Rule 3(b)(x); ICANN Policy ¶4(i).

            B. Respondent

1.         Respondent Information

                        [a.]       Name:             Brian Faries

                                                            Design Dynamix

            [b.]       Address:           2475 Underwood #165

                                                            Houston, Texas  77030

2. Response to Factual and Legal Allegations made in Complaint

This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name.  ICANN Rule 5(b)(i).        Initially, respondent notes that the Complainant has not demonstrated a trademark right or service mark right in the names FENCES4LESS or FENCES4LESS.COM (or a derivative thereof).

3. Additionally, it should be noted that the two websites are very different, both in appearance, ease of use, and products sold.  The websites look nothing alike.  The Complainant’s background is white and the Respondent’s background is black.  Complainant offers multiple product lines with a larger variety of material including aluminum, vinyl, and chain link.

4. In an effort to increase sales and profit margins, Mr. Baker with the help of Respondent Design Dynamix, desires to become more of a nationwide distributor rather than a local installer of SPECRAIL aluminum ornamental fencing.

5. Respondent did not register the disputed domain name in bad faith and is not using the disputed domain name in bad faith.  ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).  At the time of our registration of the disputed domain name, Respondent and Gary Baker did not know of Complainant’s existence or Complainant’s website or domain name and thus Respondent could not have registered the domain name with the intent to disrupt Complainant’s business.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar  Policy ¶ 4(a)(i).

            Complainant alleges rights in the FENCES4LESS.COM mark as a result of a service mark registration application with the United States Patent and Trademark Office (Ser. No. 78/349,621).  Complainant asserts that the FENCES4LESS mark has been used continuously since July of 1996 in connection with the online sales of fencing material and services.  The Panel may find that Complainant has established rights in the mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

Rights or Legitimate Interests  Policy ¶ 4(a)(ii).

            The Panel finds that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests in the name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Registration and Use in Bad Faith  Policy ¶ 4(a)(iii).

            As previously stated, Complainant has alleged that Respondent has attempted to pass itself off as Complainant.  Therefore, the Panel may find that Respondent misrepresented itself as Complainant, which is evidence of bad faith registration and use.  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent’s use of  <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith); also McBride c/o SCO Group v. Prior, FA 201643 (Nat. Arb. Forum Nov. 17, 2003) (“By intentionally passing itself off as Complainant, Respondent registered and used the disputed domain name in bad faith under Policy 4(a)(iii).”)

            The Panel may find that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by registering the domain name primarily for the purpose of disrupting the business of a competitor, specifically Complainant. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <fenceforless.com> domain name be TRANSFERRED from Respondent to Complainant.

                                   

Richard B. Wickersham, Panelist

Dated:   March 30, 2004

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