Deacom Inc. c/o Jay Deakins v. Deacom c/o Ben Dean
Claim Number: FA0902001246846
Complainant is Deacom Inc. c/o Jay Deakins (“Complainant”), represented by Susan
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deacom.com>, registered with Register.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Estella S. Gold as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 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 <deacom.com> domain name is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that 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 ICANN’s 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, 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 firstname.lastname@example.org 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.
On March 24, 2009, Respondent received notice of Complainant’s Additional Submission. 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 Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Estella S. Gold as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant asserts its rights in the DEACOM mark, registered with the United 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 <deacom.com> domain name is identical to Complainant’s DEACOM trademark.
1. Respondent claims that it has owned and used the <deacom.com> domain name for personal and professional interests since April 4, 1997.
2. Respondent formed a
3. Respondent has operated e-mail services continuously for <deacom.com> since 1997, and has used email@example.com as Respondent’s primary e-mail address to the 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 Respondent’s last name, “DEAN.”
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 is attempted.
2. Respondent has not used the domain for any DEACOM-related business throughout the past year, but rather as a “transference site.”
3. Until Respondent received notification of the Complaint herein on February 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 Complainant’s rights or registration in their trademark.
2. Respondent maintains that he has no need to maintain a website at <deacom.com>.
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 and services.
4. Respondent used a registrar’s service in the form referred to by Complainant in order to mask personal information from the public.
1. Under ICANN Policy ¶ 4(a)(i), the Respondent’s registration and use of <deacom.com> is “confusingly similar” to the Complainant’s registered trademark.
2. Under ICANN Policy ¶ 4(a)(ii), Respondent has no rights or legitimate interests in <deacom.com>.
3. Under ICANN Policy ¶ 4(a)(iii), the Respondent has acted in bad faith in the registration and use of the domain at issue.
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.
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 the DEACOM 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 complainant’s 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).
also argued that it has operated its business since 1995 and has established
common law rights in its DEACOM mark.
Complainant has set forth evidence of its trademark registration
indicating a first date of use in commerce on January 1, 1995. See Jerry Damson, Inc. v.
asserts that the <deacom.com>
domain name is identical to Complainant’s 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 name is identical
to Complainant’s mark under Policy ¶ 4(a)(i).
Damson, Inc. v.
While Respondent argues that its registration of the disputed domain name predates Complainant’s trademark rights, the Panel finds that 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 name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s 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 Complainant’s 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).”).
The Panel is mindful that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie 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 it does 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 subject domain 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 Complainant’s mark in any fashion. While Respondent asserts that Complainant discovered the wrong WHOIS information, the Panel notes that the WHOIS information lists Respondent as “Ben Dean.” 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 not commonly known by the <coppertown.com> 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 Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> 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 recently Respondent’s 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 Respondent’s 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 respondent’s non-use of the disputed domain names 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 Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that it is not limited to the Policy ¶ 4(b) factors when conducting a bad faith 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 the circumstances even when the registrant has done nothing more than register the names.”).
The Panel agrees with Complainant’s 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 respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Caravan Club 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deacom.com> domain name be TRANSFERRED from Respondent to Complainant.
Estella S. Gold, Panelist
Dated: April 14, 2009