DECKMASTERS v. Deck Masters
Claim Number: FA0208000117912
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@deckmasters.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
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 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).
DECISION
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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