Haas Outdoors, Inc. v. Lewis Arch / Mossy Oak Fence
Claim Number: FA1803001777655
Complainant is Haas Outdoors, Inc. (“Complainant”), represented by Robert Barefield, Mississippi, USA. Respondent is Lewis Arch / Mossy Oak Fence (“Respondent”), represented by Allison R. Imber of Allen, Dyer, Doppelt & Gilchrist, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mossyoakfences.com> and <mossyoakfence.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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2018; the Forum received payment on March 19, 2018.
On March 21, 2018, Wild West Domains, LLC confirmed by e-mail to the Forum that the <mossyoakfences.com> and <mossyoakfence.com> domain names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. 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 March 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 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@mossyoakfences.com, postmaster@mossyoakfence.com. Also on March 26, 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.
A timely Response was received and determined to be complete on April 19, 2018.
Complainant’s Additional Submission dated April 23, 2018, was received and considered by the Panel.
On April 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., as Panelist.
Respondent’s additional submissions dated April 26, 2018 and Complainant’s additional submissions dated April 27, 2018, were received and considered by the Panel.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends it is a well-known and famous brand name in the hunting and outdoor industry. Over the past thirty-two (32) years, Complainant has used the MOSSY OAK brand not only throughout the hunting and outdoor industry but also throughout several other non-hunting industries including, the real estate brokerage industry, the land development services industry and the outdoor media industry. Complainant has rights in the MOSSY OAK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,525,739, registered Feb. 21, 1989). See Compl. Annex A. Respondent’s <mossyoakfences.com> and <mossyoakfence.com> domain names are identical or confusingly similar to Complainant’s mark as they both contain Complainant’s entire and identical MOSSY OAK mark, differing only by the addition of the generic terms “fence” and “fences.”
Complainant contends Respondent has no rights or legitimate interests in the <mossyoakfences.com> and <mossyoakfence.com> domain names. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the infringing domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is using the domain names and/or website to advertise the installation and sale of fencing unrelated to Complainant’s business. See Compl. Annex B.
Complainant contends Respondent registered and uses the <mossyoakfences.com> and <mossyoakfence.com> domain names in bad faith. Respondent has registered both of the disputed domain names in bad faith due to its taking advantage of consumer confusion as to the source, affiliation, sponsorship or endorsement of the disputed domain names and profiting from the goodwill associated with the MOSSY OAK mark. Respondent creates this confusion to offer fencing installation goods and services unrelated to the goods and services offered by Complainant. See Compl. Annex B.
B. Respondent
Respondent, Mossy Oak Fence, LLC, is the owner of the <mossyoakfence.com> and <mossyoakfences.com> domain names and has been using them through its predecessor in interest to advertise its fence installation services since at least as early as January and March of 2009, respectively. Respondent claims its domain names are not confusingly similar to Complainant’s mark as they incorporate the terms “fence” and “fences” as they describe Respondent’s goods and services and Complainant is not entitled to an exclusive monopoly on the words “mossy oak” in commerce.
Respondent registered the <mossyoakfence.com> and <mossyoakfences.com> domain names on January 9, 2009 and March 17, 2009, respectively. See Compl. Annex C. Respondent has used the subject domain names, its name “Mossy Oak Fence” and its design for nine years in connection with a bona fide offering of fence installation services. Respondent is commonly known by “Mossy Oak Fence” and acquired common law trademark rights in the name in connection with fencing services. See Miller Decl. ¶ 12. Respondent submitted WHOIS information listing Respondent’s organization as “Mossy Oak Fence, and incorporation records with Florida’s Secretary of State. Further, Respondent and Complainant are in different industries. Respondent does not sell any hunting products, clothing items, fabrics or accessories, nor does it provide real estate brokerage services, land development services, or construction services for hunting camps, hunting property, or wildlife management areas, and Complainant does not provide fencing services.
Respondent claims it did not register the domain names in bad faith and is not using them in bad faith. Respondent did not register or acquire the domain names for the purpose of selling, renting, or otherwise transferring them to the Complainant, nor has it ever offered to sell them to Complainant. Additionally, Respondent registered and uses the domain names to offer its own noncompeting services to those goods and services provided by Complainant. Further, Complainant does not have exclusive rights to use the words “mossy oak” in all contexts.
Respondent further alleges that this Complaint should be denied based on the doctrine of laches, for delay in commencing this proceeding.
Respondent also alleges that Complainant is engaging in reverse domain name hijacking.
C. Additional Submissions
Complainant’s Additional Submission dated April 23, 2018, was received and considered by the Panel, and includes affidavits from Complainant’s employees and a transcript of a telephone voice mail message purportedly from Respondent’s representative. Respondent’s Additional Submission dated April 26, 2018 was received and considered by the Panel, including one Affidavit from Respondent’s President, includes an email exchange between Complainant’s General Counsel and Respondent from 2013, and a representation that the voice mail transcript submitted by Complainant is not of an officer, owner, employee or representative of Respondent. Respondent’s additional submission dated April 27, 2018 includes further argument and representations regarding Respondent’s good faith.
Complainant has failed to establish all elements of the policy and as such, its Complaint is denied.
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.
Complainant claims rights in the MOSSY OAK mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,525,739, registered Feb. 21, 1989). See Compl. Annex A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the MOSSY OAK mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s at-issue domain names are identical or confusingly similar to Complainant’s mark as they both contain Complainant’s entire and identical MOSSY OAK mark, differing only by the addition of the generic terms “fence” and “fences.” See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the <mossyoakfences.com> and <mossyoakfence.com> domain names are confusingly similar to the MOSSY OAK mark under Policy ¶4(a)(i).
While Respondent contends that the <mossyoakfences.com> and <mossyoakfence.com> domain names are comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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”).
Complainant contends that Respondent has no rights or legitimate interests in the <mossyoakfences.com> and <mossyoakfence.com> domain names. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Complainant concedes the WHOIS identifies “Lewis Arch / Mossy Oak Fence” as the registrant. See Compl. Annex C. Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner.
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent avers that it is commonly known by “Mossy Oak Fence” and acquired common law trademark rights in the name in connection with fencing services. See Miller Dec. ¶ 12. A finding that a respondent is commonly known by a disputed domain name can show that a respondent has rights in the same domain name. See Navigant Consulting, Inc. v Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”); see also Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Forum Oct. 21, 2002) (holding that the respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since the 1990s). Respondent claims this is proven by the WHOIS information listing Respondent’s organization as “Mossy Oak Fence”, contrary to Complainant’s blanket assertions, and that it offers fence installation services in connection with the domain names. Respondent has also submitted proof of registration of the name Mossy Oak Fence, LLC with the State of Florida Division of Corporations with an effective date of May 4, 2009. See Ex. I. Accordingly, Respondent has been commonly known by the disputed domain names, and Respondent has rights and legitimate interests in the same for the purposes of Policy ¶ 4(c)(ii).
Further, Respondent and Complainant are in different industries, as Respondent does not sell any hunting products, clothing items, fabrics or accessories, nor does it provide real estate brokerage services, land development services, or construction services for hunting camps, hunting property, or wildlife management areas, and Complainant does not provide fencing services. Using a domain name for goods or services unrelated to those of a complainant can be used to demonstrate a bona fide offering or goods or services or a legitimate noncommercial or fair use. See VIP ME ENTERPRISES LLC LIMITED LIABILITY COMPANY NEVADA v. frank ma / Vipshop (US) Inc., FA 1702016 (Forum Dec. 20, 2016) (“Respondent contends that the Domain Name is used for a legitimate offering of on-line retail services featuring women’s fashion apparel which is unrelated to Complainant’s use of the VIPME mark… On that basis, the Panel considers that Respondent has sufficiently demonstrated rights or legitimate interests in the Domain Name through its use.”). Respondent provides screenshots of the website associated with the domain names, which purports to offer the fence installation services as claimed by Respondent. See Resp. Ex. A. Complainant concedes, and in fact argues, that Respondent is in a different business than Complainant. As such, Respondent and Complainant are not engaging in competing enterprises, and Respondent has rights and legitimate interests in the domain names for the purposes of Policy ¶¶ 4(c)(i) and/or (iii).
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Since the Panel concludes that Respondent has rights or legitimate interests in the <mossyoakfences.com> and <mossyoakfence.com> domain names pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Respondent claims it registered and uses the domain names to offer its own noncompeting services to those goods and services provided by Complainant, which does not disrupt Complainant’s business. Using a domain name to offer unrelated services not in competition with a complainant can show good faith registration under the Policy. See Election Systems & Software, Inc. v. Stewart, FA 805224 (Forum Nov. 14, 2006) (Where the respondent registered the disputed domain name to reflect one of the products available from Respondent, the panel did not find bad faith pursuant to Policy ¶ 4(b)(iii)); see also PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine); see also PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine). As noted above, Respondent provides screenshots of the website associated with the domain names, which purports to offer the fence installation services as claimed by Respondent. See Resp. Ex. A.
Respondent further alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the at-issue domain names, of its rights to use the domain names. Respondent claims that Complainant made only bare, unsupported assertions as to the UDRP elements, which would clearly indicate to Complainant’s competent counsel that it could not prove the elements of the Policy. Additionally, Respondent avers that Complainant did not inform the Panel of any of its prior communications with Respondent, however Respondent fails to establish that Complainant was acting in bad faith in initiating this dispute.
Even though the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”).
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 <mossyoakfences.com> and <mossyoakfence.com> domain names REMAIN WITH Respondent.
__________________________________________________________________
David P. Miranda, Esq., Panelist
Dated: May 3, 2018
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