WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Deck Guys, Inc. v. Phil Palmer, d/b/a Deck Care of Iowa, Inc.
Case No. D2002-0739
1. The Parties
1.1 The Complainant is The Deck Guys, Inc., a Pennsylvania corporation with its principal place of business, West Chester, Pennsylvania, 19382, United States of America.
1.2 The Respondent is Phil Palmer, d/b/a Deck Care of Iowa, Inc., Des Moines, Iowa, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name is <thedeckguy.com>.
2.2 The registrar of the disputed domain name is VeriSign, 487 East Middlefield Road, Mountain View, California, United States of America.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("the Center") on August 5, 2002.
3.2 On August 6, 2002, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant and the Respondent.
3.3 On August 7, 2002, Respondent notified the Center of its receipt of the Complaint and objections thereto.
3.4 On August 9, 2002, all formal requirements for the establishment of the complaint were checked by the Center and found to be in compliance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.5 On August 9, 2002, the Center transmitted notification of the complaint and commencement of the proceedings to Respondent.
3.6 On September 12, 2002, the Center invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). The undersigned then transmitted by facsimile the executed Statement and Declaration to WIPO.
3.7 On September 16, 2002, Complainant and Respondent were notified by the Center of the appointment of the undersigned sole panelist as the Administrative Panel ("the Panel") in this matter. The Center notified the Panel that, absent exceptional circumstances it would be required to forward its decision to the Center by September 30, 2002.
3.8 The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainant is the owner of U.S. Service Mark Registration No. 2,161,327, THE DECK GUY, for "restoration of decks" in International class 37.
4.2 The Respondent registered the domain name <thedeckguy.com> on December 29, 2001. The domain name is active.
5. Partiesí Contentions
The Complainant alleges:
U.S. Trademark Registration 2,161,327 for the service mark THE DECK GUY is "identical" to the domain name <thedeckguy.com>.
The owner of the <thedeckguy.com> domain name does not have any association or affiliation with The Deck Guys, Inc.
Respondent, owner of the domain name <thedeckguy.com>, has attracted Internet users to his web site for commercial gain.
Respondent "has offered to sell the domain name" <thedeckguy.com> to Complainant.
Respondent is a franchisee of Deckare, Inc. and operates his deck maintenance business under the name of Deck Care of Iowa, Inc., which are not affiliated with Complainant.
Respondent has made no legitimate non-commercial or fair use of the domain name.
In his August 9, 2002, e-mail message to the Center, the Respondent alleges:
Respondent has been commonly known by the name "the deck guy" for several years.
Respondent founded Deck Care of Iowa, Inc. in 1996.
Deck Care of Iowa, Inc. is a company that provides deck restoration services.
Since its founding, Deck Care of Iowa, Inc. has been "very busy" with "a very large customer base," and has completed "nearly ĺ of a million square feet" of deck restoration.
In December, 2001, before notice of this dispute, Respondent registered the domain name <thedeckguy.com>.
Before registering the domain name, Respondent performed a search on Verisign and learned that the domain name <thedeckguy.com> was available.
Respondent established the web site <thedeckguy.com> in order to allow prospective customers to view work that he has performed and to provide an additional means of contacting Deck Care of Iowa, Inc.
Respondent purchased and broadcasted radio advertisements in which he referenced his web site located at <thedeckguy.com>.
Respondent only works in Des Moines, Iowa.
Occasionally, customers mistakenly access <thedeckguy.com> instead of <deckguy.com>. When this happens, Respondent refers these customers to Complainant.
6. Discussion and Findings
6.1 The Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
6.3 The Center forwarded notification of the complaint to the Respondent via post/courier and email in accordance with the contact details found in the appropriate WHOIS database.
6.4 On August 9, 2002, Respondent sent an e-mail message to the Center, detailing his objections and responses to the Complaint. The Respondentís e-mail message does not conform with the requirements of Paragraph 5 of the Rules. The Panel finds, however, that this failure to submit a Response in strict conformity with the Rules is not fatal to the Respondentís Response.
6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each of these three elements are present.
6.6 Based upon the Complainantís registration and continuous use of the service mark THE DECK GUY, the Complainant clearly has rights in the mark.
6.7 Complainant asserts that the domain name <thedeckguy.com> is identical or confusingly similar to the service mark THE DECK GUY.
6.8 The Panel finds that the domain name <thedeckguy.com> wholly incorporates the mark, THE DECK GUY.
6.9 The Panel finds that the only actual differences between the domain name <thedeckguy.com> and the service mark THE DECK GUY are the "www" and ".com." The Panel finds that the "www" and ".com" are trivial differences.
6.10 The Panel finds the <thedeckguy.com> domain name is identical and confusingly similar to the registered service mark THE DECK GUY, and that the Complainant has established it has rights in the mark THE DECK GUY, pursuant to paragraph 4(a)(i) of the Policy.
6.11 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondentís rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
6.12 There is sufficient evidence in the record to establish a legitimate dispute as to whether Respondent has legitimate interests and rights in the domain name <thedeckguy.com>.
6.13 In his August 9, 2002, e-mail message to the Center, Respondent stated that in 1996, he founded Deck Care of Iowa, Inc., a company that provides deck restoration services.
6.14 In December 2001, before notice of this dispute, Respondent registered the domain name <thedeckguy.com> in connection with the bona fide offering of services through Deck Care of Iowa, Inc.
6.15 Respondent states that, since December 2001, Respondent has made use of the domain name <thedeckguy.com> in connection with the offering of deck restoration services.
6.16 Although Respondent may not have acquired trademark or service mark rights, Respondent states that he has been commonly known by the name "the deck guy" for several years.
6.17 Although Respondent has not provided any documentary evidence to corroborate its factual allegations, the Complainant has not alleged or provided any evidence that is inconsistent with or refutes Respondentís factual allegations. Under the circumstances and based on the record before it, the Panel finds that the Respondent has legitimate interests and rights in respect of the domain name <thedeckguy.com> pursuant to paragraph 4(a)(ii) of the Policy.
6.18 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) states:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
6.19 Although Complainant alleges that Respondent offered to sell the domain name <thedeckguy.com> to Complainant, to date, Complainant has not submitted any evidence to support this allegation. Paragraph 12 of the Complaint states: "Furthermore, Respondent has offered to sell the domain name <thedeckguy.com> to Complainant. See Annex #." However, there is no corresponding Annex in the Complaint and no documentary evidence showing the alleged offer to sell the domain name. No further details are provided in the Complaint. In fact, the allegations in the Complaint are extremely conclusory and for the most part simply recite the Policy without much, if any, factual support.
6.20 Even if there had been an offer to sell the domain name, without more, this does not amount to bad faith, especially where there is no evidence that the price for which the domain name was offered is in excess of any reasonable out-of-pocket costs that could have been associated with the registration and/or transfer of the disputed domain name.
6.21 In addition, Respondent alleges that when customers mistakenly access <thedeckguy.com> instead of <deckguy.com>, Respondent tells them he only works in Iowa and refers such customers to Complainant. This is inconsistent with a finding that Respondent acted in bad faith.
6.22 The Panel finds the Complainant has failed to establish that the Respondent registered and used the domain name <thedeckguy.com> in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
6.23 The Panel finds that the Complainant has failed to establish all three of the required elements pursuant to paragraph 4(a) of the Policy and thus has failed to demonstrate that Respondent has engaged in abusive domain name registration.
As the Panel finds that Respondent has a legitimate interest in the domain name <thedeckguy.com> and finds no evidence that Respondent acted in bad faith in establishing and maintaining the domain name, the Complaint, requesting that the domain name be transferred to the Complainant, is denied.
R. Eric Gaum
Dated: September 30, 2002