DECISION

 

Lynx Franchising Intellectual Property, LLC v. Superior Fence LLC

Claim Number: FA2606002229318

 

PARTIES

Complainant is Lynx Franchising Intellectual Property, LLC ("Complainant"), represented by Maria Jose Rivera of McHale & Slavin, P.A., Florida, USA. Respondent is Superior Fence LLC ("Respondent"), represented by Igor Motsnyi of Motsnyi IP dba Motsnyi Legal, Serbia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <superiorfencenj.com>, registered with Name.com, Inc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Christopher S. Gibson and Jeffrey M. Samuels as Panelists and Flip Jan Claude Petillion as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 25, 2026; Forum received payment on June 25, 2026.

 

On June 25, 2026, Name.com, Inc. confirmed by e-mail to Forum that the <superiorfencenj.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 June 29, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 24, 2026 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@superiorfencenj.com. Also on June 29, 2026, 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.

 

A timely Response was received and determined to be complete on July 24, 2026.

 

On August 6, 2026, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Christopher S. Gibson and Jeffrey M. Samuels as Panelists and Flip Jan Claude Petillion as Chair.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims that the <superiorfencenj.com> domain name (hereafter, the "Disputed Domain Name") is confusingly similar to its SUPERIOR FENCE & RAIL, INC. and SUPERIOR FENCE & RAIL trademarks. According to Complainant, the Disputed Domain Name incorporates the dominant portion "SUPERIOR FENCE" of its marks and merely adds the geographic abbreviation "NJ", which suggests a website associated with Complainant or its franchisees in New Jersey.

Complainant further contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. In summary, Complainant asserts that:

- Complainant, as well as its affiliates and predecessor-in-interest, promoted its services under the SUPERIOR FENCE & RAIL trademarks since at least 2002, the Disputed Domain Name only being created in 2020;

- Respondent announced on May 26, 2026, that it was changing its business name from "Superior Fence" to "Leslie & Sons", indicating of no legitimate purpose in owning the Disputed Domain Name;

- Respondent has no relevant trademark rights or authorization from Complainant; and

- Respondent's use of the Disputed Domain Name for competing fencing services creates a risk of implied affiliation.

Finally, Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. Complainant contends that Respondent registered and used the Disputed Domain Name, which is identical or confusingly similar to Complainant's SUPERIOR FENCE & RAIL, INC. trademark, to suggest sponsorship or endorsement by Complainant by promoting sales of services as recited on Complainant's registered trademark. Complainant further relies on alleged instances of actual consumer confusion and submits that Respondent intentionally attracts Internet users for commercial gain by creating a likelihood of confusion with Complainant's marks.

 

B. Respondent

Respondent does not dispute Complainant's registered trademark rights, but submits that the Complaint should be denied under the second and third elements of the Policy. Respondent points out that the terms "FENCE & RAIL, INC." and "FENCE & RAIL" are disclaimed in Complainant's trademark registrations and that Complainant's more recent trademark registration post-dates the registration of the Disputed Domain Name.

Respondent claims rights or legitimate interests in the Disputed Domain Name because it was registered for Respondent's bona fide local fencing business. Respondent states that it formed Superior Fence and Railing LLC in New Jersey on October 4, 2019, before registering the Disputed Domain Name on January 15, 2020, and subsequently registered "Superior Fence LLC" as an alternate business name. According to Respondent, the name was selected for its descriptive and laudatory meaning and the Disputed Domain Name corresponded directly to Respondent's business name. According to Respondent, Complainant failed to provide any evidence that its trademark was known nationwide by January 2020 and failed to provide any evidence that would confirm that its business had any significant reputation across the US by October 2019-January 2020 and that Respondent registered the disputed domain name to target Complainant specifically. Back in late 2019-early 2020, Respondent claims that Complainant was just one of many market players in the US using the "Superior Fence" name. According to Respondent, Complainant cannot claim exclusive rights over the terms "Fence" and "Rail".

 

Respondent states it became aware of confusion between the two businesses in 2025, as Complainant's presence in Respondent's state of New Jersey became more substantial. To address this issue, Respondent decided to rename her business in November 2025 to "Leslie & Sons Fencing LLC" / "Leslie & Sons Fence". Respondent did so not because of any pressure or cease-and-desist letters from Complainant but at her own will. It renamed its business prior to any communication from Complainant or its attorneys.

Respondent denies that the Disputed Domain Name was registered or used in bad faith. In summary, Respondent submits that:

- the UDRP has a limited scope and is not designed to deal with good faith disputes between holders of competing legitimate interests;

- the UDRP does not deal with claims of alleged trademark infringement, if there is no evidence of Respondent's targeting and cybersquatting, in particular, in situations when a complainant chooses a descriptive and laudatory name for its business; and

- Respondent did not target Complainant or any other business and it did not register and is not using the Disputed Domain Name in bad faith as defined by the UDRP.

 

FINDINGS

Complainant is the intellectual property corporate affiliate of Empower Brands Franchising, LLC, which is also the parent company of Superior Fence and Rail Franchisor, LLC. 

 

Complainant is the owner of the following trademarks:

 

- U.S. Trademark Registration No. 3,873,318 for SUPERIOR FENCE & RAIL, INC., registered on November 9, 2010, and covering the installation of fences; and

- U.S. Trademark Registration No. 7,252,466 for SUPERIOR FENCE & RAIL, registered on December 26, 2023, and covering the installation of fences.

Complainant claims use of the SUPERIOR FENCE & RAIL mark in connection with fencing services since at least 2002 and operates a website at <superiorfenceandrail.com>.

Respondent formed Superior Fence and Railing LLC in New Jersey on October 4, 2019. The Disputed Domain Name was registered on January 15, 2020, and was used in connection with Respondent's fencing business in New Jersey. Respondent registered Superior Fence LLC as an alternate name for its business on March 2, 2020.

Respondent later changed its business name to Leslie & Sons Fencing LLC. Respondent states that this rebranding process began before Complainant's April 2026 cease-and-desist letter. The Disputed Domain Name currently redirects to the domain name <leslieandsonsnj.com>, resolving to Respondent's website under its new business name.

The Parties agree that instances of confusion between their respective businesses have occurred more recently, although Respondent disputes certain specific evidence submitted by Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 Disputed 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 Disputed Domain Name; and

(3)       the Disputed Domain Name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Policy ¶ 4(a)(i) requires Complainant to show that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Registration of a mark with the USPTO is sufficient to establish rights under the Policy. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018). ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such a mark for the purposes of Policy ¶ 4(a)(i)"). Complainant has provided evidence of its U.S. registrations for SUPERIOR FENCE & RAIL, INC. and SUPERIOR FENCE & RAIL. The fact that certain elements of the registered marks are disclaimed does not prevent Complainant from establishing trademark rights for purposes of the first element. See Boston Properties Limited Partnership v. CLAUDETTE MOUSSA, FA 1610502 (Forum May 11, 2015).

The Disputed Domain Name incorporates the words "superior" and "fence", which form a recognizable and dominant portion of Complainant's marks, and adds the geographic abbreviation "NJ". The addition of this geographic term does not prevent a finding of confusing similarity. The generic Top-Level Domain ".com" is disregarded for purposes of this comparison.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

In this case the Panel does not need to consider or decide this issue, given its decision on the third element below and the fact that a successful complaint under the UDRP must establish all three elements under paragraph 4(a) of the Policy.

 

Registration and Use in Bad Faith

The Policy requires Complainant to prove both bad faith registration and bad faith use. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017). The relevant question for registration in bad faith is whether, on the balance of probabilities, Respondent registered the Disputed Domain Name with Complainant's trademark in mind and with an intention to take unfair advantage of, or otherwise abuse, that mark.

Where a complainant's mark is not inherently distinctive and corresponds to dictionary or descriptive terms, and a respondent credibly shows that the complainant's mark had a limited reputation or was not known in the respondent's location, panels may be reluctant to infer that the respondent knew or should have known of the complainant's mark. See WIPO Overview 3.1, section 3.2.2.

The Panel observes that Complainant's first trademark registration predates the registration of the Disputed Domain Name by approximately nine years. The Parties also operate in the same industry. However, prior trademark rights and activity in the same field do not, without more, establish that Respondent targeted Complainant when registering the Disputed Domain Name.

In the Panel's view, the terms making up the relevant portion of Complainant's mark are laudatory and descriptive in the context of fencing services. Complainant's registrations disclaim exclusive rights in "FENCE & RAIL, INC." and "FENCE & RAIL" apart from the marks as shown. Moreover, the Panel finds that the term "superior", while not disclaimed, is laudatory as it refers to high-quality products or services. Finally, the record also contains evidence that various unrelated businesses in the United States have used names incorporating "Superior Fence" for fencing-related businesses.

Against that background, Respondent has provided a plausible and contemporaneously supported explanation for its choice of the Disputed Domain Name. The evidence shows that Respondent formed a New Jersey company under the name "Superior Fence and Railing LLC" on October 4, 2019, several months before registering the Disputed Domain Name on January 15, 2020. The stated business purpose was the installation of fences and railings. Respondent, thereafter, used the Disputed Domain Name in connection with an actual local fencing business and subsequently registered "Superior Fence LLC" as an alternate name. The record therefore supports Respondent's explanation that the Disputed Domain Name was selected because it corresponded to the name of Respondent's own business and described that business.

Complainant asserts longstanding use of its mark and states that its brand is currently present in numerous states. However, the evidence submitted by Complainant does not establish the extent of the mark's reputation in late 2019 or January 2020, when Respondent selected its company name and registered the Disputed Domain Name. In particular, the historic material relied upon by Complainant establishes earlier use of its website and trademark, but does not demonstrate that the mark had such a reputation at the relevant time, particularly in New Jersey, that Respondent's knowledge and targeting of Complainant can reasonably be inferred.

Respondent provides undisputed screenshots from the Complainant's website on October 14, 2019, mentioning a presence only in Florida, Tennessee and North Carolina. Respondent further relies on ChatGPT-generated material concerning Complainant's historical geographic presence. The Panel does not consider such material, standing alone, to constitute particularly reliable evidence of the facts asserted. Nevertheless, the Panel notes that the conclusions reflected in that material are not materially contradicted by the documentary record submitted by Complainant. More importantly, the burden remains on Complainant to establish bad faith, and the evidence before the Panel is insufficient to show that Respondent registered the Disputed Domain Name because of Complainant or its trademark.

The Panel has also considered the fact that the Parties are direct competitors and the evidence of more recent actual confusion. Such confusion may be relevant to questions of trademark infringement, but it does not by itself establish Respondent's intent when registering the Disputed Domain Name in January 2020. Respondent accepts that confusion arose more recently and states that it responded by beginning a rebranding process in 2025, before receiving Complainant's cease-and-desist letter in April 2026. The evidence of later confusion therefore does not overcome the absence of sufficient evidence of targeting at the time of registration.

The UDRP is directed at abusive domain name registration and is not intended to resolve all disputes concerning potentially conflicting trademark or business-name rights. On the record before it, the Panel considers that any broader dispute between the Parties concerning the continued use of similar names for competing fencing services is more appropriately addressed through other legal avenues.

In view of the above, the Panel finds insufficient indications that Respondent targeted Complainant's mark when registering the Disputed Domain Name. Complainant has therefore failed to prove that the Disputed Domain Name was registered in bad faith.

In the absence of proof of bad faith registration, it is unnecessary to determine whether subsequent use of the Disputed Domain Name was in bad faith.

 

Accordingly, the Panel finds that Complainant has failed to establish the third condition of paragraph 4(a) of the Policy.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <superiorfencenj.com> domain name REMAIN WITH Respondent.

 

 

 

Flip Jan Claude Petillion, Chair

Christopher S. Gibson, Panelist

Jeffrey M. Samuels, Panelist

 

Dated: August 20, 2026