Decision (UDRP DEACOM.COM)

8/14/2019 Decision (UDRP DEACOM.COM)

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NATIONAL ARBITRATION FORUM

DECISION

Deacom Inc. c/o Jay Deakins v. Deacom c/o Ben Dean

Claim Number: FA0902001246846

PARTIES

Complainant is Deacom Inc. c/o Jay Deakins (Complainant), represented by SusanShaw, Pennsylvania, USA. Respondent is Deacom c/o Ben Dean (Respondent), NewJersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is , registered with Register.com, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and tothe best of his or her knowledge has no known conflict in serving as Panelist in this

proceeding.

Estella S. Gold as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically onFebruary 9, 2009; the National Arbitration Forum received a hard copy of the Complaint

on February 18, 2009.

On February 10, 2009, Register.com, Inc. confirmed by e-mail to the National Arbitration

Forum that the domain name is registered with Register.com, Inc. and

that the Respondent is the current registrant of the name. Register.com, Inc. has verifiedthat Respondent is bound by the Register.com, Inc. registration agreement and has

thereby agreed to resolve domain-name disputes brought by third parties in accordance

with ICANNs Uniform Domain Name Dispute Resolution Policy (the Policy).

On February 27, 2009, a Notification of Complaint and Commencement of

Administrative Proceeding (the Commencement Notification), setting a deadline of

March 19, 2009 by which Respondent could file a Response to the Complaint, wastransmitted to Respondent via e-mail, post and fax, to all entities and persons listed on

Respondents registration as technical, administrative and billing contacts, and to

[email protected] by e-mail.

A timely Response was received and determined to be complete on March 18, 2009.

A timely Supplemental Response from both parties was received and determined to be

complete.


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On March 24, 2009, Respondent received notice of Complainants AdditionalSubmission. The notification stated that Complainant has submitted this Additional

Submission in accordance with Supplemental Rule 7(a) of the National Arbitration

Forum Supplemental Rules.

On March 31, 2009, pursuant to Complainants request to have the dispute decided by a

single-member Panel, the National Arbitration Forum appointed Estella S. Gold asPanelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to

Complainant.

PARTIES CONTENTIONS

A. Complainant

1. Complainant asserts its rights in the DEACOM mark, registered with theUnited States Patent and Trademark Office (USPTO) under Registration No. 3,201,526

issued January 23, 2007.

2. Trademark registration indicated a date of first use in commerce on

January 1, 1995.

3. Complainant argues that the domain name is identical toComplainants DEACOM trademark.

B. Respondent

1. Respondent claims that it has owned and used the domain

name for personal and professional interests since April 4, 1997.

2. Respondent formed a New Jersey corporation, DEACOM, INC. on March

4, 2002 through October 16, 2006, and subsequently operated under the name DEACOM,a sole proprietorship, from 1997 to the present date.

3. Respondent has operated e-mail services continuously for

since 1997, and has used [email protected] as Respondents primary e-mail address tothe present date.

4. Respondent primarily uses the domain for Google Apps.

5. The domain name, DEACOM, is alleged to be similar, although not

identical to Respondents last name, DEAN.


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C. Additional Submissions by Complainant

1. The domain name at issue is not being used in connection with a bona fide

offering of goods or services as evidenced by the 404 error message when use isattempted.

2. Respondent has not used the domain for any DEACOM-related businessthroughout the past year, but rather as a transference site.

3. Until Respondent received notification of the Complaint herein onFebruary 12, 2009, WHOIS did not identify the Respondent as being known by the

disputed domain name. The 404 error message illustrates that Respondent did not have

an association with the disputed domain name.

D. Additional Submissions by Respondent

1. Respondent does not dispute Complainants rights or registration in theirtrademark.

2. Respondent maintains that he has no need to maintain a website at

.

3. Respondent asserts that lack of a web page at this host name is not an

indication of whether the domain is being used for a bona fide offering of goods andservices.

4. Respondent used a registrars service in the form referred to byComplainant in order to mask personal information from the public.

FINDINGS

1. Under ICANN Policy 4(a)(i), the Respondents registration and use of

is confusingly similar to the Complainants registered trademark.

2. Under ICANN Policy 4(a)(ii), Respondent has no rights or legitimate

interests in .

3. Under ICANN Policy 4(a)(iii), the Respondent has acted in bad faith in

the registration and use of the domain at issue.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the

Rules) instructs this Panel to decide a complaint on the basis of the statements anddocuments submitted in accordance with the Policy, these Rules and any rules and

principles of law that it deems applicable.


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Paragraph 4(a) of the Policy requires that the Complainant must prove each of thefollowing three elements to obtain an order that a domain name should be cancelled or

transferred:

(1) 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) the 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.

Identical and/or Confusingly Similar.Policy 4(a)(i).

Complainant asserts its rights in the DEACOM mark, which it registered with the United

States Patent and Trademark Office (USPTO) (Reg. No. 3,201,526 issued January 23,

2007; filed March 8, 2006). The Panel finds that Complainant has sufficient rights in theDEACOM mark under Policy 4(a)(i) through this trademark registration with the

USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)(finding that a trademark registration adequately demonstrates a complainants rights in a

mark under Policy 4(a)(i));see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum

Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM,CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

Complainant has also argued that it has operated its business since 1995 and has

established common law rights in its DEACOM mark. Complainant has set forthevidence of its trademark registration indicating a first date of use in commerce on

January 1, 1995. See Jerry Damson, Inc. v. Tex. Intl Prop. Assocs., FA 916991 (Nat.Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in theJERRY DAMSON ACURA mark because it provided sufficient evidence of its

continuous use of the mark since 1989 in connection with a car dealership).

Complainant asserts that the domain name is identical to Complainants

DEACOM mark. The Panel finds that the addition of the generic top-level domain

.com is irrelevant under Policy 4(a)(i), the Panel finds that the disputed domain nameis identical to Complainants mark under Policy 4(a)(i). See Jerry Damson, Inc. v. Tex.

Intl Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (The mere addition of a

generic top-level domain (gTLD) .com does not serve to adequately distinguish the

Domain Name from the mark.);see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb.Forum Mar. 27, 2007) (The Panel also finds that Respondents domain name

is identical to Complainants ABT mark since addition of a generic top-level domain

(gTLD) is irrelevant when conducting a Policy 4(a)(i) analysis.).

While Respondent argues that its registration of the disputed domain name predates

Complainants trademark rights, the Panel finds that such a determination is notnecessary 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 name is identical or

confusingly similar to Complainants mark. See AB Svenska Spel v. Zacharov, D2003-


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0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant tohave registered its trademark prior to the respondents registration of the domain name

under Policy 4(a)(i) but may prevent a finding of bad faith under Policy 4(a)(iii));see

also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5,2007) (Although the domain name in dispute was first registered in 1996, four years

before Complainants alleged first use of the mark, the Panel finds that Complainant can

still establish rights in the CLEAR BLUE marks under Policy 4(a)(i).).

Rights or Legitimate Interests. Policy 4(a)(ii).

The Panel is mindful that Complainant must first make aprima facie case that

Respondent lacks rights and legitimate interests in the disputed domain name under

Policy 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or

legitimate interests. See Hanna-Barbera Prods., Inc. v. Entmt Commentaries, FA 741828

(Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a primafacie case that the respondent lacks rights and legitimate interests in the disputed domain

name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that itdoes have rights or legitimate interests in a domain name);see also AOL LLC v. Gerberg,

FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (Complainant must first make a prima

facie showing that Respondent does not have rights or legitimate interest in the subjectdomain names, which burden is light. If Complainant satisfies its burden, then the

burden shifts to Respondent to show that it does have rights or legitimate interests in the

subject domain names.).

Complainant contends that Respondent lacks license to use Complainants mark in any

fashion. While Respondent asserts that Complainant discovered the wrong WHOISinformation, the Panel notes that the WHOIS information lists Respondent as BenDean. The Panel finds Respondent is not commonly known by the disputed domain

name under Policy 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA

715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was notcommonly known by the domain name where there was no evidence

in the record, including the WHOIS information, suggesting that the Respondent was

commonly known by the disputed domain name);see also M. Shanken Commcns v.

WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006)

(finding that the respondent was not commonly known by the

domain name under Policy 4(c)(ii) based on the WHOIS information and other

evidence in the record).

Complainant contends, and submits evidence to corroborate, that the disputed domain

name does not resolve to an active website. The Panel finds that that until more recentlyRespondents domain name does not lead to an active website. The Panel finds that

Respondent lacks rights and legitimate interests under Policy 4(a)(ii), and that

Respondent has not made a bona fide offering of goods or services under Policy 4(c)(i)or a legitimate noncommercial or fair use of Respondents disputed domain name under

Policy 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July

12, 2006) (finding that the respondents non-use of the disputed domain names


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demonstrates that the respondent is not using the disputed domain names for a bona fide

offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair

use pursuant to Policy 4(c)(iii));see also TMP Intl, Inc. v. Baker Enters., FA 204112

(Nat. Arb. Forum Dec. 6, 2003) ([T]he Panel concludes that Respondent's [failure tomake an active use] of the domain name does not establish rights or legitimate interests

pursuant to Policy 4(a)(ii).).

Registration and Use in Bad Faith.Policy 4(a)(iii).

The Panel finds that it is not limited to the Policy 4(b) factors when conducting a badfaith analysis; rather, the Panel considers the totality of the circumstances. See Twentieth

Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (The

requirement in the ICANN Policy that a complainant prove that domain names are being

used in bad faith does not require that it prove in every instance that a respondent is

taking positive action. Use in bad faith can be inferred from the totality of thecircumstances even when the registrant has done nothing more than register the names.).

The Panel agrees with Complainants assertion that Respondent has not utilized the

disputed domain name in an active manner, the Panel finds that Respondent engaged in

bad faith registration and use under Policy 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondents failure to develop its website

in a two year period raises the inference of registration in bad faith);see also CaravanClub v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent

made no use of the domain name or website that connects with the domain name, and that[failure to make an active use] of a domain name permits an inference of registration and

use in bad faith).

DECISION

Having established all three elements required under the ICANN Policy, the Panel

concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the domain name be TRANSFERREDfrom Respondent to Complainant.

___________________________________________________

Estella S. Gold, Panelist

Dated: April 14, 2009

Decision (UDRP DEACOM.COM)

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