1. The Parties The Complainant is Future Outdoors, LLC of Midlothian, Texas, United States of America (“USA”), represented by Start Up IP Services, USA.
The Respondent is Monty Suther of Rockwall, Texas, USA, represented by Sprott & Golden, USA.
2. The Domain Name and Registrar The disputed 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 July 18, 2014. On July 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2014. The Response was filed with the Center on August 19, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on August 26, 2014. 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, located in North Central Texas, sells, installs and services vinyl and wood fencing, decks, arbors, and other home exterior products. The Complainant asserts common law trademark rights in FUTURE FENCE AND DECK dating back to 1996. The Respondent, formerly a vice-president of the Complainant, registered the disputed domain name on December 1, 2013, and registered “Future Fence & Deck” as an assumed business name in Rockwall County, Texas on December 13, 2013. The disputed domain name resolves to the Respondent’s “Future Fence & Deck” website, where the Respondent offers his services as a provider of vinyl fencing, vinyl shade structures, and other vinyl home exterior products.
5. Parties’ Contentions A. Complainant The Complainant asserts common law rights in FUTURE FENCE AND DECK dating back to 1996, as a successor in interest to Future Fence and Deck LLC. The Complainant contends that Richard Poland, who organized the Complainant in 2011 and serves as its sole director and manager, had formed Future Fence and Deck LLC as a Texas limited liability company in 1996. According to the Complainant, Richard Poland left Future Fence and Deck LLC in 2009. Future Fence and Deck LLC subsequently forfeited its corporate charter in 2011 and is now defunct.
The Complainant maintains that the disputed domain name is essentially identical, or in the alternative confusingly similar, to its FUTURE FENCE AND DECK mark. The Complainant submits that the omission of the word “and” in the disputed domain name does not serve to distinguish it from the Complainant’s mark, and that the generic Top-Level Domain (gTLD) “.com” should be disregarded for purposes of identity or confusing similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant acknowledges that the Respondent had been employed at the now defunct Future Fence and Deck LLC, but submits he was not a director, manager, or otherwise in a position to claim colorable rights in the mark. The Complainant represents that the Respondent, during his tenure with the Complainant, had discussed strategies with Richard Poland for re-launching the FUTURE FENCE AND DECK mark, but that no strategy was agreed upon. The Complainant alleges that the Respondent, without the Complainant’s knowledge or consent, registered the disputed domain name while still employed by the Complainant.
The Complainant maintains that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant argues that the Respondent’s discussion with Richard Poland regarding a strategy for re-launching the mark does not constitute demonstrable preparations for use of the mark. Further, the Complainant asserts that the Respondent’s unauthorized use of the disputed domain name with a website selling goods and services directly competing with those of the Complainant does not constitute a bona fide offering of goods and services.
In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent clearly was aware of the Complainant’s rights in FUTURE FENCE AND DECK when registering the disputed domain name, as a result of the strategy sessions he attended while employed by the Complainant. The Complainant submits that the Respondent’s unauthorized registration and use of the Complainant’s mark to sell competitive products constitutes bad faith.
B. Respondent Regarding the first element of the Policy, the Respondent submits that the Complainant has no rights in the name “Future Fence and Deck” or in . The Respondent disputes that Richard Poland incorporated Future Fence and Deck LLC as a Texas limited liability company. The Respondent notes this was a Michigan limited liability company with which Poland was not associated until 2003, when the company registered to do business in Texas. The Respondent asserts that while Poland was a director, he was not an owner and did not have a controlling interest in the company. Thus, the Respondent argues that brochures submitted by the Complainant reflecting the use of the name “Future Fence and Deck” belong to the Michigan limited liability company, with which the Complainant never had any affiliation.
The Respondent represents that Poland was terminated as a director on the Michigan limited liability company in 2008-2009, and his interest in that company, if any, bought out. The Respondent further proffers a January 2010 assumed name registration for “Future Fence and Deck” in January 2010 by another Michigan limited liability company, FFD Asset Acquisition Company, LLP, and maintains that neither Poland nor the Complainant ever contested this registration and use of the name by the other company.
The Respondent asserts that he was an initial investor along with Poland in the Complainant, and that neither the Complainant, Poland, nor the Respondent ever used “Future Fence and Deck” in connection with the Complainant’s goods or services. The Respondent denies ever discussing with Poland the Complainant‘s using “Future Fence and Deck”, and he alleges that Poland unlawfully removed him from his position in company in 2013.
The Respondent contends that he has established rights and legitimate interests in the disputed domain name. The Respondent submits that he registered “Future Fence & Deck” as a trade name in Rockwall County, Texas in December 2013, registered the disputed domain name in December 2013, and has traded under the “Future Fence & Deck” name prior to receiving any notice of this dispute. The Respondent has submitted invoices and payments reflecting sales of vinyl fencing under the name “Future Fence & Deck” in February and March 2014.
In light of the foregoing, the Respondent alleges that the Complaint has been brought in bad faith. The Respondent claims that he does not compete with the Complainant, and that the Complainant cannot demonstrate that it is in the vinyl fence business or that it is using “Future Fence & Deck” as a mark.
6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000 0270.
B. Identical or Confusingly Similar The Panel initially addresses whether the Complainant has established trademark or service mark rights in “Future Fence and Deck.” The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001 0218.
In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others.
After careful consideration of the facts and circumstances in the record, the Panel concludes that the Complainant has not satisfied its burden of demonstrating common law trademark or service mark rights in “Future Fence and Deck”. Even were the Panel to assume that the now defunct Future Fence and Deck LLC had at some point established common law rights in this symbol, the Complainant has submitted no evidence that it has ever used “Future Fence and Deck” as a designation of source for its goods and services.
Accordingly, the Panel concludes that the Complainant has not satisfied its burden under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests In view of the Panel’s determination above under paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith In view of the Panel’s determination above under paragraph 4(a)(i) of the Policy, it is also unnecessary for the Panel to address issues of bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. The Panel observes, however, that the Policy by its own terms is not applicable to any and all disputes involving domain names. Panels must decide cases based on the limited scope of the Policy.
7. Reverse Domain Name Hijacking Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. To prevail on such a claim, a respondent must show that the complainant knew of the respondent’s unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000 1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000 1151.
While the Panel has found that the Complainant failed to meet its burden of proof under the first element of the Policy, the Panel is not persuaded that the Complainant clearly acted in bad faith in invoking the Policy. The Respondent and the Complainant are direct competitors. The Respondent’s separation from the Complainant was by all appearances acrimonious. The Respondent clearly was aware of the historic use of “Future Fence and Deck” when registering the disputed domain name, and “future” is the distinctive or dominant element in both the Complainant’s name and the disputed domain name.