Complaint (UDRP DEACOM.COM)

8/14/2019 Complaint (UDRP DEACOM.COM)

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UDRPComplaint-deacom.com.rtf

RE: Deacom, Inc. c/o Jay Deakins v Deacom c/o Ben Dean - FA0902001246846

Table of Contents Documentary Evidence

A. Whois Record for Deacom.comB. United States Patent and Trademark Office Reg. No. 3,201,6526C. ICANN Uniform Domain Name Dispute Resolution PolicyD. Deacom.com 404 error message, displayed as of 02/16/2009


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Int. Cl.:9

Prior U.S. Cls.: 21, 23, 26, 36 and 38

United States Patent and Trademark OfficeReg. No. 3,201,526

Jn 23,2007

TRADEMARKPRI\ICIP.AL RECISTER

DEACOM. INC.IPENNSYLVANIA

SOLE PRO.PRIETORSHIP)

950 4'EST VAILEY ROAD, SIIfIE 3Ol]OWA].NE, PA 19087

FOR: COMPUTER SOFTWARE THAT PROVIDESREALTIME, INTEGR.ATED BUSINESS MANAGE-MENI INIELLIGENCE BY COMBINING INFOR.MATION FROM VARIOUS DATABASES ANDPRESENTINC T IN AN !AS'I.IO.t \DtRSTANDUSTR N'TI [AC!, IN CLASS I .S . LS. : I , ] ] . :U,36 AND 38).

FIRST USE -l-t995rIN COMMERCE ,l-1995.

THE COLOR(S) BLUE AN'D YALLOW IS/ARECLAIMED AS A FE{TURE OF THE MARK

THL M.{RK ( ONSISTS ! THE WORD'DIA.COV" I\ YfI tOW LLTTLR5,PNCASED Y ABLUERECTANGLE.

sER. O. 78-832,47d ILED3"8.2006.

VARY lvlUNSOh\, EXAMINING ATTORNEY


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[Deacom, Inc.c/o Jay Deakins

xxx

xxx

] )

(Complainant) ))

v. ) Domain Names In Dispute:) [deacom.com]

[Deacomc/o Ben Dean

xxx

xxx

]))

(Respondent) ))

COMPLAINT IN ACCORDANCE WITHTHE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

[1.] This Complaint is hereby submitted for decision in accordance with the Uniform DomainName Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names andNumbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999 (ICANNPolicy), and the Rules for Uniform Domain Name Dispute Resolution Policy (ICANN Rules),adopted by ICANN on August 26, 1999 and approved by ICANN on October 24, 1999, and theNational Arbitration Forum (NAF) Supplemental Rules (Supp. Rules). ICANN Rule 3(b)(i).

[2.] COMPLAINANT INFORMATION

[a.] Name: [Deacom, Inc. c/o Jay Deakins] [b.] Address: [ xxx

xxx ][c.] Telephone: [ xxx ] [d.] Fax: [ xxx ][e.] E-Mail: [[email protected]]


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[Provide the same information for Complainants authorized representative in the administrative proceeding.] ICANN Rule 3(b)(ii).

The Complainants preferred method for communications directed to the Complainant in theadministrative proceeding: ICANN Rule 3(b)(iii).

Electronic-Only Material[a.] Method: [e-mail]][b.] Address: [[email protected]][c.] Contact: [Susan Shaw]

Material Including Hard Copy[a.] Method: [post][b.] Address/Fax: [ xxx ] [c.] Contact: [Susan Shaw]

The Complainant chooses to have this dispute heard before a [single-member administrative panel]. ICANN Rule 3(b)(iv).

[If Complainant elects to have this dispute heard before a three-member panel, provide thenames and contact details of three candidates from any ICANN-approved Providers list of

panelists to serve as one of the panelists.] ICANN Rule 3(b)(iv).

[3.] RESPONDENT INFORMATION

[a.] Name: [Deacom c/o Ben Dean ] [b.] Address: [ xxx ][c.] Telephone: [ xxx ] [d.] Fax:[e.] E-Mail: [[email protected]]

Additional contact information for respondent:[a.] Name: [ Domain Discreet, ATTN: deacom.com ][b.] Address: [Avenida do Infante 50, Funchal, Madeira 9004-521 PT ][c.] Telephone: [1-902-7495331] [d.] Fax:[e.] E-Mail: [[email protected]]

[Provide the same information for Respondents authorized representative in theadministrative proceeding, if known.] ICANN Rule 3(b)(v).

[In this section, please include any arguments you are making with respect to ForumSupplemental Rule 1(d)].

[4.] DISPUTED DOMAIN NAME(S)

[a.] The following domain name(s) is/are the subject of this Complaint: ICANN Rule3(b)(vi).


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[deacom.com]

[b.] Registrar Information: ICANN Rule 3(b)(vii).

[i.] Registrars Name: [REGISTER.COM, INC.][ii.] Registrar Address: [575 8 th Avenue, , 11th Floor,

New York, NY 10018][iii.] Telephone Number: [1-212-789-9100][iv.] E-Mail Address:

[c.] Trademark/Service Mark Information: ICANN Rule 3(b)(viii).

[Word Mark: DEACOM Goods and Services: Computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface.US Serial Number: 78832474 Registration Number: 3,201,526]

[5.] FACTUAL AND LEGAL GROUNDS

This Complaint is based on the following factual and legal grounds: ICANN Rule3(b)(ix). The analysis in this section may require more space than provided, but theentire Complaint shall not exceed fifteen (15) pages. NAF Supp. Rule 4(a).

[a.] [The domain name is identical to the DEACOM trademark in which Deacom, Inc.has rights. Deacom, Inc. is privately held provider of enterprise software and hasbeen using the DEACOM trademark in commerce since 1995. Deacom, Inc. filed

for the registration of the DEACOM trademark with the United States Patent and Trademark Office on March 8, 2006 and the trademark was officially registered with the USPTO on January 23, 2007 (see documentary evidence B. per the Tableof Contents).] ICANN Rule 3(b)(ix)(1); ICANN Policy 4(a)(i).

[b.] [The Respondent has no legitimate interest in respect of the domain name, as thedomain is not being used in connection with a bona fide offering of goods or services. The Respondent has no license or agreement to use the DEACOM mark,the WHOIS information for deacom.com is listed as of 02/09/2009 as Domain

Discreet ATTN: deacom.com Avenida do Infante 50 Funchal, Madeira 9004-521PT (see documentary evidence A. per the Table of Contents), and does not identify

the Respondent as being commonly known by the disputed domain name, and thedeacom.com website itself does not identify the Respondent as having anyassociation with the disputed domain name. The Respondent was not using thedisputed domain name for any bona fide offering of goods or services nor alegitimate noncommercial or fair use, as evidenced by the disputed domainnames current inability to resolve to a website. Internet users who attempt toaccess the domain name receive a 404 error message (see documentary


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evidence D. per the Table of Contents)]. ICANN Rule 3(b)(ix)(2); ICANN Policy 4(a)(ii).

[The Panel may consider any relevant aspects included in, but not limited to ICANN Policy 4(c):

(i.) Whether, before any notice to the Respondent of the dispute, Respondentsuse of, or demonstrable preparations to use, the domain name or a namecorresponding to the domain name is in connection with a bona fide offering of goods or services; or

(ii.) Whether Respondent (as an individual, business, or other organization)has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights; or

(iii.) Whether Respondent is 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.]

[c.] [The Respondent is currently not making fair use of the domain name, as thedisputed domain name fails to resolve to a website, and Internet users whoattempt to access the domain name receive a 404 error message (seedocumentary evidence D. per the Table of Contents).] ICANN Rule 3(b)(ix)(3);ICANN Policy 4(a)(iii).

[The Panel may consider any relevant aspects included in, but not limited to ICANN Policy 4(b):

(i.) Whether there are circumstances indicating that Respondent has

registered or has acquired the domain name primarily for the purpose of selling,renting, or otherwise transferring the domain name registration to theComplainant who is the owner of the trademark or service mark or to acompetitor of that Complainant, for valuable consideration in excess of

Respondents documented out-of-pocket costs directly related to the domainname; or

(ii.) Whether Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in acorresponding domain name, provided that Respondent has engaged in a patternof such conduct; or

(iii.) Whether Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv.) Whether by using the domain name, Respondent has intentionallyattempted to attract, for commercial gain, Internet users to Respondents web siteor other on-line location, by creating a likelihood of confusion with theComplainants mark as to the source, sponsorship, affiliation, or endorsement of


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Respondents web site or location or of a product or service on Respondents website or location.]

[6.] REMEDY SOUGHT

The Complainant requests that the Panel issue a decision that the domain-name registration be[transferred] ICANN Rule 3(b)(x); ICANN Policy 4(i).

[7.] OTHER LEGAL PROCEEDINGS

[To the best knowledge of the complainant, there are no other legal proceedings that have beencommenced or terminated in connection with or relating to deacom.com, that which is thesubject of this complaint.] ICANN Rule 3(b)(xi).

[8.] COMPLAINT TRANSMISSION

The Complainant asserts that a copy of this Complaint, together with the cover sheet asprescribed by NAFs Supplemental Rules, has been sent or transmitted to the Respondent

(domain-name holder), in accordance with ICANN Rule 2(b) and to the Registrar(s) of thedomain name(s), in accordance with NAF Supp. Rule 4(e). ICANN Rule 3(b)(xii); NAF Supp.Rule 4(c).

[9.] MUTUAL JURISDICTION

The Complainant will submit, with respect to any challenges to a decision in the administrativeproceeding canceling or transferring the domain name, to [the Commonwealth of New York, asthe location of the Registrar where the domain name is registered.] ICANN Rule 3(b)(xiii).

[10.] CERTIFICATION

Complainant agrees that its claims and remedies concerning the registration of the domain name,the dispute, or the disputes resolution shall be solely against the domain-name holder andwaives all such claims and remedies against (a) the National Arbitration Forum and panelists,except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and(d) the Internet Corporation for Assigned Names and Numbers, as well as their directors,officers, employees, and agents.

Complainant certifies that the information contained in this Complaint is to the best of Complaint's knowledge complete and accurate, that this Complaint is not being presented for anyimproper purpose, such as to harass, and that the assertions in this Complaint are warranted

under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.


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Respectfully Submitted,

___________________[Signature]

Jay Deakins[Name]

02/25/2009[Date]

[Annex any documentary or other evidence, including a copy of the Policy applicable to thedomain name(s) in dispute and any trademark or service mark registration upon which thecomplaint relies, together with a schedule indexing such evidence.] ICANN Rule 3(b)(xv).

[The Complaint, not including annexed material, shall not exceed ten (10) pages.] NAF Supp.Rule 4(a).

[The Complainant shall submit three (3) copies of the Complaint, including annexed material, tothe National Arbitration Forum if the Complainant requested a single-member panel. If the

Complainant requested a three (3) member panel, the Complainant shall submit five (5) copiesof the Complaint, including annexed material, to the National Arbitration Forum. If the Respondent requests a three (3) member panel, the Complainant may be asked to submit additional copies of the Complaint.] NAF Supp. Rule 4(b).

Documents

Complaint (UDRP DEACOM.COM)