Gary W. Ash v. Marc Mandy / The Flyer
Claim Number: FA1809001806387
Complainant is Gary W. Ash (“Complainant”), California, USA. Respondent is Marc Mandy / The Flyer (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <miamifences4less.com>, registered with Wild West Domains, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2018; the Forum received payment on September 26, 2018.
On September 17, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <miamifences4less.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@miamifences4less.com. Also on September 28, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Gary W. Ash, runs a fence manufacturing and distributing business. Complainant has rights in the FENCES4LESS.COM mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,435,166, registered Nov. 19, 2013). Users are likely to be confused into believing the <miamifences4less.com> is operated by Complainant.
Respondent lacks rights and legitimate interests in the <miamifences4less.com> domain name because Respondent uses the disputed domain name to pass off as Complainant to sell competing products for commercial gain.
Respondent registered and uses the <miamifences4less.com> domain name in bad faith. Respondent attempts to pass off as Complainant to sell competing products for Respondent’s own commercial gain. Further, Respondent violated its duty to avoid infringement of Complainant’s rights in the FENCES4LESS.COM mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Gary W. Ash of Valley Center, California, USA. Complainant is the owner of the domestic registration for the mark FENCES4LESS.COM. Complainant has continuously used the mark since at least as early as 2013, in association with the manufacture, sale, and distribution of fencing related products on the internet at its <fences4less.com> website.
Respondent is Marc Mandy / The Flyer of Tampa, Florida, USA. Respondent’s registrar’s address is listed as Scottsdale, Arizona, USA. The Panel notes the <miamifences4less.com> domain name was registered on or about February 6, 2014.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the FENCES4LESS.COM mark based upon its registration of the mark with the USPTO. Registration with the USPTO generally establishes rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registration (Reg. No. 4,435,166, registered Nov. 19, 2013). The Panel here finds that Complainant has rights in the FENCES4LESS.COM mark under Policy ¶ 4(a)(i).
Additionally, Complainant argues that consumers are likely to be confused into believing Respondent’s <miamifences4less.com> domain name is operated by Complainant. Previous Panels have determined that likelihood of confusion is irrelevant to Policy ¶ 4(a)(i), and that the question is rather whether the disputed domain is confusingly similar to the complainant’s mark. See YETI Coolers, LLC v. Brock Hutchinson , FA 1606001679922 (Forum Aug. 11, 2016) (“the relevant question [under Policy ¶ 4(a)(i)] is not… whether the domain name has caused confusion, but the abstracted question of whether the domain name is confusingly similar to the trademark, regardless of use.”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law). In a Policy ¶ 4(a)(i) analysis, the Panel must determine whether there is such confusing similarity.
Complainant does not make any specific contentions relevant to the confusing similarity analysis. However, the Panel notes that confusing similarity may be shown under Policy ¶ 4(a)(i) when a disputed domain name differs from a complainant’s mark only by the addition of a geographical term. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”). Here, the domain name only differs from Complainant’s mark by adding the geographic location “Miami.” The Panel here finds that the <miamifences4less.com> domain name is confusingly similar to Complainant’s FENCES4LESS.COM mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <miamifences4less.com> domain name because Respondent uses the domain to pass off as Complainant for commercial gain. Use of a disputed domain name to pass off as a complainant may evince a lack of rights and legitimate interests in the disputed domain under Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides printouts from the disputed domain name’s resolving webpage that features Complainant’s FENCES4LESS.COM mark along with listings for the same goods and services Complainant sells. The Panel here finds that Respondent fails to use the disputed domain name in connection with a bona fide offering or legitimate use under Policy ¶ 4(c)(i) or (iii), and therefore lacks rights and legitimate interests in the <miamifences4less.com> domain name.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <miamifences4less.com> domain name in bad faith because Respondent uses the domain to pass off as Complainant for commercial gain. Use of a disputed domain name to pass off as a complainant may indicate bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant provides evidence that the disputed domain name’s resolving webpage offers goods similar to Complainant’s, confusing users into purchasing goods and services from Respondent instead of Complainant. The Panel here finds that Respondent attempts to pass off as Complainant for commercial gain, and therefore registered and uses the <miamifences4less.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent registered and uses the <miamifences4less.com> domain name in bad faith because the domain violates a known mark and that Respondent breached its duty to avoid trademark infringement in registering the domain. Here, Complainant appears to allege that Respondent had constructive notice of Complainant’s rights in the FENCES4LESS.COM mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel may analyze whether Respondent had actual knowledge of Complainant’s rights in the mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Here, Respondent incorporates Complainant’s FENCES4LESS.COM mark in its entirety in the domain name and uses the domain to sell goods similar to those sold by Complainant. The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the FENCES4LESS.COM mark prior to registering the <miamifences4less.com> domain name, and thus registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <miamifences4less.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Nov. 6, 2018
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