DECKMASTERS v. Deck Masters
Claim Number: FA0208000117912
Complainant is DECKMASTERS, Pittsburgh, PA (“Complainant”). Respondent is Deck Masters, Toledo, OH (“Respondent”) represented by Ralph Gross.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deckmasters.com>, registered with Melbourne IT.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 9, 2002; the Forum received a hard copy of the Complaint on August 8, 2002.
On August 12, 2002, Melbourne IT confirmed by e-mail to the Forum that the domain name <deckmasters.com> is registered with Melbourne IT and that the Respondent is the current registrant of the name. Melbourne IT has verified that Respondent is bound by the Melbourne IT registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 9, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on September 9, 2002.
On September 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Deckmasters Inc., holds U.S. Trademark Registration Number 1,938,849 to provide business services under the name “Deckmasters” registered for a term of ten years from November 28, 1995 and is actively engaged in the business of designing and building decks, porches and sun structures currently with nine office locations within the states of Pennsylvania and Ohio. Complainant states that much confusion has been caused by Respondent’s use of the DECKMASTERS trademark and this confusion has been heightened by the use of the <deckmasters.com> domain name.
Prior to 2000, Complainant requested the <deckmasters.com> domain name which at the time was being used by another deck building operation in Atlanta, GA. Complainant successfully defended the right to ownership of the domain name but due to bad advice from their Internet Provider, Complainant did not register the name immediately and in the interval Respondent obtained registration of <deckmasters.com>.
Complainant asserts that Respondent does not hold rights to the Deckmasters service name and has failed to perform or ignores the results of a Trade Name Search to operate a business under the name of Deckmasters or Deck Masters. The domain name is identical to or confusingly similar to Complainant’s registered name.
Complainant states that it cannot assert a claim of bad faith against Respondent because it does not know the intentions of Respondent and wishes to make no assumptions as to the nature of Respondent’s intentions. Complainant asserts that Respondent’s possession and marketing of <deckmasters.com> is undermining the growth, stability and reputation of the DECKMASTERS corporate trademark. Clients, vendors and affiliates seeking information regarding the Deckmasters corporation are unable to do so at the most logical and concise destination for this information; i.e. <deckmasters.com>.
Complainant filed in evidence that it owns the service mark DECKMASTERS for deck construction services in Class 37.
Respondent concedes that the domain name is identical to or confusingly similar to Complainant’s trademark.
Respondent asserts, however, that it has rights and legitimate interests in the domain name. Respondent submits that Respondent Deck Masters has before any notice of the dispute used the domain name, <deckmasters.com> in connection with a bona fide offering of goods and services for over two years and six months, the first use being 02-12-2000. Respondent also used Deck Masters, a name corresponding to the domain name in connection with a bona fide offering of goods and services since before 1979, a date that predates Complainant’s mark by more than 16 years. Respondent filed evidence to establish that he was operating a business using the name Deck Masters since the early 1970s. Respondent, Deck Masters, has been commonly known as Deck Masters in Ohio, Michigan and Indiana for over 24 years. Deck Masters has since its start been heavily involved in the home building trade in North West Ohio, South East Michigan and Indiana. A letter from Ronald S. Gerber the former Executive Vice President of the Home Builders Association of Greater Toledo shows Deck Masters’ participation in the Home Builders Association of Greater Toledo from 1984 to the present. In 1997, Ralph Gross of Deck Masters served as President of this Association. He also sat on the Board of Directors for two years.
Respondent asserts that before this Complaint it had no knowledge of Complainant and that Respondent has no interest in misleadingly diverting consumers or to tarnish the trademark or service mark at issue.
With respect to bad faith, Respondent asserts that he has never offered the domain name for sale and that there is no pattern of conduct by Respondent to prevent Complainant from using the mark in a corresponding domain name. Respondent points out that <deckmasters.us>, <deckmasters.biz>, <deckmasters.info>, and other similar domain names are available for registration. Furthermore, Complainant, Deckmasters Technologies Inc., can continue to use the domain name <deckmasters-tech.com> that it has been using. Respondent also pointed out the existence of several other business name registrations and existing businesses using the words deck master or deckmaster. Respondent asserts that a simple yellow page search on the Internet discloses more than forty deckmasters businesses listed in more than seventeen states, and that a corporate search reflects more than twenty deckmaster corporations incorporated in the United States.
Respondent further asserts that the likelihood of confusion of one of these deckmaster businesses with another is diminished significantly because each of these businesses tends to operate in a specific geographic location, serving customers only in that location.
There were no additional submissions.
The domain name <deckmasters.com> is confusingly similar to Complainant’s service mark DECKMASTERS. However, Respondent has established rights or legitimate interests in the said domain name.
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 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 the 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 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
Respondent has conceded that the domain name is confusingly similar to Complainant’s service mark.
Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, Respondent can demonstrate rights or legitimate interests in the domain name by demonstrating that before he had any notice of the dispute, he used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The documents filed by Respondent indicate that Respondent was using the name Deck Masters, a name corresponding to the domain name, at least as early as the 1970s. The evidence supplied includes correspondence confirming the existence of Deck Masters and includes advertisements, directory listings and other documents showing that Respondent was carrying on a legitimate business using the name Deck Masters. Hence, Respondent, before notice of the dispute, was using a domain name corresponding to the name in question in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).
These documents also establish that, even though Respondent does not have a registered trademark for the name Deck Masters, he has been commonly known by the name for a long time pursuant to Policy ¶ 4(c)(ii).
Respondent, therefore, has established rights or legitimate interests in using the domain name within the meaning of the Policy.
Registration and Use in Bad Faith
In light of the finding with respect to rights or legitimate interests, it is not necessary that I deal with the question of bad faith. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Complainant’s Complaint with respect to the domain name <deckmasters.com> is hereby DISMISSED.
Anne M. Wallace, Q.C., Panelist
Dated: September 14, 2002
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