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 Susan
Shaw, Pennsylvania, USA. Respondent is Deacom c/o Ben Dean (“Respondent”), New
Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL
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.

PROCEDURAL HISTORY
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
postmaster@deacom.com 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.

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 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.

B. Respondent

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 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 <deacom.com>

since 1997, and has used ben@deacom.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.

FINDINGS
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.

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. 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 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).

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 forth
evidence of its trademark registration indicating a first date of use in commerce on
January 1, 1995. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat.
Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the
JERRY 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 <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). See Jerry Damson, Inc. v. Tex.
Int’l 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 Respondent’s <abt.com> domain name
is identical to Complainant’s 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
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).”).

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

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).”).

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 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).

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 <deacom.com> domain name be TRANSFERRED

from Respondent to Complainant.

___________________________________________________

Estella S. Gold, Panelist

Dated: April 14, 2009