WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jerry Chang d/b/a Fence4ever v. Lonxiang Shen, Import Fence Direct Inc.
Case No. D2016-2498
1. The Parties
The Complainant is Jerry Chang d/b/a Fence4ever of Walnut, California, United States of America (“USA” or “US”), represented by MT Law PC, USA.
The Respondent is Lonxiang Shen, Import Fence Direct Inc. of Pico Rivera, California, USA.
2. The Domain Name and Registrar
The disputed domain name <fence4ever.net> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2016. On December 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2017.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 13, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant Mr. Chang is an individual residing in Walnut, California, USA who sells and installs fence-related products, principally mesh screens that are attached to chain link fences to afford privacy and serve as windscreens and sunscreens. The Complainant states that he has operated this business under the name FENCE4EVER since September 2013.
The Complainant has been selling his products and services through a website using the domain name <fence4ever.com> since sometime in 2014. (The first archived screenshot of the Complainant’s website that appears in the Internet Archive’s Wayback Machine is dated March 1, 2015.) Every page and image on the Complainant’s website features a “Fence4ever” logo (without a trademark symbol). The website advertises fencing supplies in “Southern California,” both “for home use and industrial use.” The Complaint attaches proof that the Complainant has advertised fencing products on Amazon and eBay since late 2013 using the FENCE4EVER mark. The Complainant also attaches website and sales records since 2014, as well as samples of customer reviews referring to the products with the name FENCE4EVER.
The Complainant applied for US trademark registration of FENCE4EVER as a standard-character mark on October 21, 2016, claiming first use in commerce on September 28, 2013. That application is pending.
According to the Registrar, the Domain Name was created on May 23, 2016. It is registered in the name of the Respondent organization, which appears in the online database operated by the California Secretary of State as a California corporation first registered in California in January 2013. The only officer and director listed on the state corporations database seems to be the same individual, Longxiang Shen, who appears as the registrant for the Domain Name, “Lonxiang Shen” (with a slight and not uncommon change of spelling) at the same postal address in Pico Rivera, California.
The Complaint attaches screenshots of the website to which the Domain Name resolved in December 2016 (the “Respondent’s former website”). It was headed “FENCE4EVER” and advertised free shipping throughout the US for fence screens, sun shade sails, and other items. The Respondent’s former website did not actually name the Respondent but characterized it as a “professional fence and privacy screen sales company” located in Pomona, California, with a manufacturing facility in China. The Domain Name was used for a contact email address as well as for the website.
The Internet Archive’s Wayback Machine has no archived screenshots of pages associated with the Domain Name. At the time of this Decision, the Domain Name does not resolve to an active website; the Respondent’s former website seems to have been removed shortly after the current UDRP proceeding was notified.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to its common law FENCE4EVER mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent is a competitor who registered and used the Domain Name in bad faith, in an effort to disrupt the Complainant’s business and misdirect Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall 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.”
A. Identical or Confusingly Similar
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
When relying on a common law mark, “[t]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.” (WIPO Overview 2.0, paragraph 1.7) “The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark.” Id.
The Panel finds that the Complainant has demonstrated that the mark in question here has been established in the market for fencing products in a relevant geographical area shared by the parties (Los Angeles County, California), through consistent advertising, sales, reviews, and online presence since late 2013. The material portion of the Domain Name (disregarding the generic top-level domain name “.net”) is identical to the mark. Hence, the Panel finds that that first element of the Complaint has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has demonstrated common law rights in an identical mark, and the Respondent has used the Domain Name, which is distinctive and not merely generic, to advertise its own competing products. The Respondent has not come forward to assert rights or legitimate interests in the Domain Name. The Respondent’s company name is different from the Domain Name. The website to which the Domain Name briefly resolved, while headed with the Domain Name, did not identify the name of the Respondent or the brand name of its products. The Panel finds under these circumstances that the Complainant has made a prima facie case without rebuttal by the Respondent and concludes that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following passages cited by the Complainant (in which “you” refers to the registrant of the domain name):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent’s former website advertised some of the same fencing products sold by the Complainant, both from a base in Los Angeles County, California. The Panel finds it telling that the Domain Name is identical to the Complainant’s mark and is a coined term rather than a generic phrase, substituting the sound-alike numeral “4” for the preposition “for.” It is simply improbable that the Respondent registered <fence4ever.net> and used it to sell fence-related products without being aware of the Complainant’s more established use of <fence4ever.com> to sell fence-related products. The Respondent has not offered any legitimate reason for selecting the Domain Name, and the Panel must draw the most likely inferences that the Respondent, a direct competitor, meant to disrupt the Complainant’s business and take advantage of the goodwill associated with its mark.
The Panel concludes on the available record that the third element of the Complaint has been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <fence4ever.net> be transferred to the Complainant.
W. Scott Blackmer
Date: January 25, 2017