WIPO Arbitration and Mediation Center

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.

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

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

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.

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.

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.

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.

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.

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).

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).

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).

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)