Pacific Fence & Wire Co. v. Jim Paradise

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise

WIPO Case No. D2001-0237

1. The Parties

Complainant is Pacific Fence & Wire Co., an Oregon corporation. It is represented

by Kolish, Hartwell, Dickinson, McCormack & Heuser.

Respondents are Pacific Fence, a New York business, and Jim Paradise, its proprietor.

They are represented by Galgano & Burcke.

2. Domain Name and Registrar

The domain name at issue is: <pacificfence.com>.

The Registrar with whom the domain name is registered is Network Solutions,

Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

Pacific Fence & Wire Co.’s complaint (the "Complaint") on February

13, 2001. The Center undertook to verify that the Complaint satisfies the formal

requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the

"Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy

(the "Rules"), and the Supplemental Rules for Uniform Domain Name

Dispute Resolution Policy (the "Supplemental Rules"). The Center issued

a Complaint Deficiency Notice on February 26, 2001, and Pacific Fence &

Wire Co. remedied the deficiency by filing an amendment on March 12, 2001. The

formal date of the commencement of this administrative proceeding was March 16, 2001,

and the due date for a Response was set at April 4, 2001.

On April 4, 2001, the Response was received. On April 10, 2001, Complainant

submitted a "Reply" to the Response. On April 11, 2001, Respondent

objected to the Reply and asked, in the alternative, that it be allowed to submit

a sur-reply if the Response were to be accepted. On April 20, 2001, after clearing

for potential conflicts, the Center appointed David H. Bernstein as the Sole

Panelist in this matter.

On May 15, 2001, the Panel issued an Interim Order, the relevant portions of

which are reprinted below:

Both the Policy and the Rules demonstrate a strong preference for single submissions

– that is, the Complaint and the Response. Parfums Christian Dior S.A. v.

Jadore, Case No. D2000-0938 (WIPO,

November 3, 2000); Plaza Operating Partners, Ltd. v. Pop Data Technologies,

Inc. v. Pillus, Case No. D2000-0166

(WIPO, June 1, 2000). The Rules for Uniform Domain Name Dispute Resolution Policy

(the "Rules") do not provide the parties with any right to file replies

on their own volition. Rather, Rule 12 provides that only the Panel

may request further submissions. Plaza Operating Partners, Ltd., supra;

see also Tribeca Film Center, Inc. v. Lorenzo Brusasco-MacKenzie, Case

No. D2000-1772 (WIPO, April 10, 2001) (example of Panel sua sponte request

for additional submissions). Nevertheless, Complainants routinely submit replies,

which not only is usually a waste of party resources (not to mention the resources

of the Center and Panelists), but also delays the final resolution of the proceeding,

which undermines the Policy’s promise of rapid, cost effective dispute resolution.

CRS Technology Corp. v. CondeNet, Inc., File No. FA0002000093547

(NAF March 27, 2000). For these reasons, many Panels have held that additional

submissions are inappropriate except in the rarest of circumstances, such as

discovery of evidence or new case decisions not reasonably available to the

submitting party at the time of its initial submission, or arguments by the

respondent that the complainant could not reasonably have anticipated. Id.;

Plaza Operating Partners, Ltd., supra; Document Technologies, Inc. v. International

Electronic Communications, Inc., Case

No. D2000-0270 (WIPO June 6, 2000); Universal City Studios, Inc. v. G.A.B.

Enterprises, Case No. D2000-0416 (WIPO June

29, 2000); Wal-Mart Stores, Inc. v. MacLeod, Case

No. D2000-0662 (WIPO September 19, 2000); Electronic Commerce Media,

Inc. v. Taos Mountain, File No. FA0008000095344 (NAF October 11, 2000);

Parfums Christian Dior S.A., supra; Viz Communications, Inc. v. Redsun,

Case No. D2000-0905 (WIPO December 22, 2000).

When these rare circumstances present themselves and a party believes that

a further submission is appropriate, the party should seek leave from the Panel

before filing a substantive submission. Document Technologies, Inc., supra.

Among other things, this process would save the parties the expense of preparing

submissions that the Panel decides not to accept, and would allow the parties

to focus their submissions on the issues identified by the Panel as pertinent

for further briefing.

In this case, the Panel agrees that the Response raised issues that the Complainant

could not reasonably have anticipated: Respondents claim that they filed for

an assumed name in New York (a filing that Respondents did not reveal in their

pre-Complaint communications with Complainant) and have made actual use of the

Pacific Fence name. Accordingly, the Panel concludes that a Reply on these issues

is appropriate, and will accept those portions of the Reply and accompanying

affidavit that relate to these allegations -- namely, ¶¶ 1-4 and 12 of the Reply,

and ¶¶ 1-2, 5 and 7 of the accompanying affidavit.

Having agreed to accept an additional submission from the Complainant, the

next question is whether to grant Respondents’ alternative request for leave

to file a sur-reply. The Rules contemplate that a respondent has the right to

respond to a complaint, Rule 5, and direct the Panel to treat the parties "with

equality." Rule 10(b). In other cases where additional materials have been

sought from the Complainant, the Respondent has been given a further right of

response. Tribeca Film Center, Inc., supra. The Panel thus concludes

that it is appropriate to grant the Respondents a right to respond to the Complainant’s

additional submission, but Respondents shall limit their submission only to

the issues raised in those portions of the Reply accepted by the Panel. Respondents

should file their sur-reply by May 21, 2001. If Respondents believe they will

need more time to prepare their sur-reply, they should seek an extension at

their earliest opportunity. Thereafter, no party should file any other submissions

without first requesting permission from the Panel".

This order was sent to Respondents at the email address they selected for electronic-only

communications. On May 30, 2001, the Center informed the Panel that Respondents

did not submit any sur-reply.

4. Parties’ Contentions

A. Complaint

Complainant, a manufacturer of fences and fence materials, states that it has,

since 1921, used the marks PACIFIC and PACIFIC FENCE and has enjoyed extensive

sales and publicity involving the marks. Thus, Complainant’s marks are widely

recognized in the fence industry. Complainant holds a concurrent use U.S. trademark

registration for PACIFIC on fences and parts thereof (its registration excludes

Hawaii).

Complainant contends that the domain name at issue is identical to Complainant’s

PACIFIC FENCE mark and confusingly similar to Complainant’s registered PACIFIC

mark for fences.

Complainant further alleges that Respondents lack any rights or legitimate

interests in the domain names. Complainant states, on information and belief,

that Respondents are contractually associated with Patrician Products, a manufacturer

of fence components that competes directly with Complainant.

Complainant states that, in June 2000, it discovered that Respondents were

operating a website using the domain name at issue, which stated "Pacific

Fence Inc. has been installing quality commercial and residential fence products

for three generations" and gave a telephone number. Complainant alleges,

on information and belief, that the telephone number was actually for a company

called Hedge Fence that appears to be associated with Respondents, as its address

is adjacent to Respondents’.

In July 2000, Complainant sent a letter to Respondents insisting that they

cease use of Complainant’s marks and the domain name at issue and transfer the

domain name at issue to Complainant. Complainant states that it received no

reply, though Respondents did stop using the domain name at issue to resolve

to a website.

Complainant contends that Respondent Jim Paradise and Complainant’s representatives

have attended and exhibited fence products at the same trade shows from the

1980s to the present. At one such show on January 17, 2001, one of Complainant’s

employees approached Paradise and asked him to transfer the domain name. According

to Complainant, Paradise responded that he would transfer the domain name if

Complainant would compensate him for the expenses he had incurred, and that

he would contact Complainant about those expenses. On January 29, 2001, Paradise

called Complainant and claimed expenses of $9,000 but did not provide a breakdown

of those expenses.

Finally, Complainant alleges that Respondents registered and used the domain

name in order to prevent Complainant from reflecting its mark in a corresponding

domain name, to misdirect consumer inquiries about Complainant to Hedge Fence,

and to extort money from Complainant.

B. Response

Respondents operate a retail fence material business. In their defense, Respondents

allege that there are multiple businesses using the name Pacific Fence or Pacific

in connection with fence businesses.

Respondents state that Jim Paradise has worked in the fence industry for approximately

thirty years. Between approximately 1991 and 1995, he sold fence products to

at least one company in Hawaii with the name Pacific Fence.

According to Respondents, in light of the many other uses of the names Pacific

and/or Pacific Fence in the fence industry, Complainant’s marks are neither

inherently distinctive nor strong, and have been abandoned by Complainant’s

failure to police its marks.

Respondents further allege that they have used the name Pacific Fence in connection

with the sale and installation of fences since 1994, and that they have answered

their telephones as "Pacific Fence" since that time. On May 23, 1994,

they registered the name Pacific Fence with the New York Department of State

under a Certificate of Assumed Name for Hedge Fence Corp. At that time, Respondents

contend, they were not aware of the Complainant nor had they done business with

Patrician Products, Inc.

Respondents contend that they did not register the domain name in bad faith,

and that Jim Paradise has never been an employee, agent, or representative of

Patrician Products, Inc. In addition, Respondents contend that they were aware

of the Pacific Fence company in Hawaii when they registered their business name

in New York, but did not believe that any one company had exclusive rights to

the names "Pacific" or "Pacific Fence." Respondents urge

that Complainant is a wholesaler operating out of Oregon, which has not done

business on the east coast, whereas Respondents are a small retail fence installing

business based on Long Island, New York. Therefore, Respondents do not compete

with Complainant.

C. Reply

In the portions of its Reply to the Response that were accepted by the Panel,

Complainant avers that the State of New York dissolved Hedge Fence Corp. on

September 23, 1998 for failure to pay franchise taxes and that Hedge Fence Corp.’s

Certificate of Assumed Name has been discontinued. Furthermore, in June 2000,

Complainant’s employee called the phone number listed on Respondents’ website,

and the phone was answered "Hedge Fence." Thus, Complainant contends,

Respondents have not shown legitimate use of "Pacific Fence" as of

1999 when the domain name was registered.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain

name, a Complainant must prove each of the following:

(1) that 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) that the Respondent has no rights or legitimate interests in respect of

the domain name; and

(3) that the Respondent has registered and used the domain name in bad faith.

A. The Domain Name Is Identical or Confusingly Similar to Complainant’s Trademark

Respondents allege that Complainant has abandoned its trademark because other

companies use the same mark. Complainant, however, has a valid U.S. registration,

which is prima facie evidence of validity. It would take compelling evidence

in these necessarily truncated proceedings for the Panel to disregard this valid

registration. Electronic Commerce Media v. Taos Mountain, File No. FA0008000095344

(NAF October 11, 2000).

Here, Respondents’ evidence is not sufficiently compelling to show abandonment

as a matter of law. Many of the names Respondents list lack addresses, and Respondents

have submitted little evidence that the companies listed actually provide goods

or services under a "Pacific" mark. Moreover, most of the listings

do not use the unmodified "Pacific Fence" mark, but rather composite

marks combining the word "Pacific" with other, distinguishing words

(e.g., "Asia Pacific Fence"). That such marks coexist may limit

the strength of Complainant’s mark, but it does not render it abandoned. The

one company listed that does use "Pacific Fence" for fencing related

goods and services is "Pacific Fence" in Hawaii, but that is a permitted

concurrent use that does not threaten Complainant’s rights under its registration

in the rest of the United States. In sum, Respondents’ list of other "Pacific

" related names does not amount to compelling evidence of abandonment,

which would at a minimum require substantial evidence of others’ use of the

same mark in commerce and that this use diminished the identifying power of

the Complainant’s claimed mark.

Having found Complainant to have trademark rights, the Panel must then determine

whether the domain name is identical or confusingly similar thereto. That is

obviously the case – <pacificfence.com> completely incorporates Complainant’s

"Pacific" trademark and adds the generic word fence – and Respondents

do not dispute it. See Magnum Piering, Inc. v. The Mudjackers, Case

No. D2000-1525 (WIPO January 29, 2001).

B. Respondents Do Not Have a Legitimate Interest in the Domain Name

The parties have a factual dispute about whether Respondents’ have a legitimate

interest in the domain names. The existence of a dispute does not defeat the

Panel’s ability to resolve this matter. Instead, a panel should make a determination

based on the submissions, bearing in mind the complainant’s burden of proof

and the necessarily truncated record. (Footnote

1)

Here, the parties’ conflicting accounts offer facts that could almost all be

true: Though Respondents registered the assumed name "Pacific Fence"

in 1994, their assumed name registration appears to have lapsed well before

their registration of the domain name at issue on July 30, 1999. Complainant

has also provided evidence that, in practice, both in the telephone listings

and in answering the phone, Respondents did not use "Pacific Fence"

to identify their business before notice of this dispute, and thus was not using

this name in connection with a bona fide offering of services. The Panel specifically

allowed Respondents’ an opportunity to provide further information about their

use of "Pacific Fence", but Respondents failed to submit any such

information. Under the Rules, the Panel may draw negative inferences from Respondents’

failure to submit the requested information, especially given that Respondents

sought leave to file a sur-reply. Rule 14(b).

The Panel concludes that Respondents were not commonly known by the name "Pacific

Fence" at the time they registered the domain name. See Policy ¶ 4(b)(ii).

In addition, the Panel finds that, before notice of the dispute, Respondents

were not using, or preparing to use, the domain name in connection with a bona

fide offering of goods or services. The website reached through the domain name

simply invited visitors to call Hedge Fence’s number, without disclosing the

Hedge Fence name. This website appears to have been designed to divert customers

looking for Complainant. The Policy does not contemplate that any

offering of goods or services is a "bona fide offering of goods or services,"

see Policy ¶ 4(b)(i), and it is not "bona fide" to attempt to

play on Internet users’ confusion. Universal City Studios, Inc. v. G.A.B.

Enterprises, Case No. D2000-0416 (WIPO

June 29, 2000).

C. Respondents Registered and Used the Domain Names in Bad Faith

Respondents do not deny that they knew of Complainant at the time they registered

the domain name in 1999. It is also noteworthy that Respondents carefully do

not deny that they have a contractual relationship with Patrician Products,

Inc., one of Complainant’s direct competitors, such that what Respondents do

to harm Complainant benefits their business associate. Although the Panel believes

that, under these circumstances, Respondents’ conduct could well fall within

Policy ¶ 4(c)(iii), which states that registration of a domain name primarily

for the purpose of disrupting the business of a competitor constitutes bad faith,

the Panel need not reach that conclusion because Respondents’ conduct also demonstrates

bad faith under other elements of the Policy.

Specifically, the Panel finds that, based on the record before the Panel, Respondents

intentionally attempted to attract, for commercial gain, Internet users by creating

a likelihood of confusion as to the source, sponsorship, affiliation or endorsement

of Respondents’ website. See Policy ¶ 4(c)(iv). Internet users seeking

Complainant are likely to assume that the domain name at issue is associated

with it; before notice of this dispute, the site encouraged visitors to call

Respondents. Although retail and wholesale are often distinct markets, visitors

might well expect that there was an association between retail and wholesale

businesses with the same name, and might call Respondents to find out more about

Complainant. Respondents’ offer to sell the domain name for what is plainly

an amount in excess of its documented out-of-pocket costs also allows the Panel

to infer bad faith registration and use given that Respondents have no legitimate

interest in the domain name. See Policy ¶ 4(c)(i).

6. Decision

For all of the foregoing reasons, the Panel decides that Complainant has met

its burden of proof under paragraph four of the Policy: the domain name <pacificfence.com>

is confusingly similar to Complainant’s trademark, Respondents lack a legitimate

interest in the domain name, and Respondents registered and used the domain

name in bad faith. Accordingly, this Panel concludes that the domain name should

be transferred to the Complainant.

David H. Bernstein

Sole Panelist

Dated: June 11, 2001

Footnotes:

1. Magnum Piering, Inc., supra; Electronic Commerce Media, Inc., supra;

cf. Do The Hustle, LLC v. Tropic Web, Case

No. D2000-0624 (WIPO Aug. 21, 2000) (noting importance of testing credibility

of parties’ submissions rather than accepting assertions). If a panel determines

that a complainant has satisfied its burden by a preponderance of the evidence,

the existence of conflicting accounts is no barrier to ordering a domain name

transfer. If either party does not agree with the panel’s evaluation of the

evidence, it has the option to pursue the matter in a forum that allows for

full discovery and live testimony. Policy ¶ 4(k). (back to text)