Nosworthy Telecommunications Distributor,
Inc. v. Headsets.com, Inc.
Claim
Number: FA0412000381227
Complainant is Nosworthy Telecommunications Distributor,
Inc. (“Complainant”), represented by Gary
D. Swearingen, 1191 Second
Avenue, 18th Floor, Seattle, WA 98101-2939. Respondent is Headsets.com, Inc. (“Respondent”), One Daniel Burnham Court, #310C,
San Francisco, CA 94109.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <headsetszone.com>, registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com.
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
14, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 15, 2004.
On
December 15, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the National Arbitration Forum that the domain name <headsetszone.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent
is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a
Directnic.com has verified that Respondent is bound by the Intercosmos Media
Group, Inc. d/b/a Directnic.com 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
December 15, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 4, 2004 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@headsetszone.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 11, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <headsetszone.com>
domain name is confusingly similar to Complainant’s HEADSETZONE mark.
2. Respondent does not have any rights or
legitimate interests in the <headsetszone.com> domain name.
3. Respondent registered and used the <headsetszone.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant,
Nosworthy Telecommunications Distributor, Inc., has been in the retail headset
business for more than 38 years. In 1998, it began using the trademark
HEADSETZONE in conjunction with its retail sales of headsets, and has
consistently and extensively used the mark HEADSETZONE since, on its website at
HeadsetZone.com and in magazines, on-line advertising and other advertising
venues.
On March 27, 2002 Respondent, Headsets.com, Inc., registered the domain
name <headsetszone.com>. The web site located at <headsetszone.com>
has no content, and is not used to offer goods or services, but merely redirects
consumers to Respondent’s own website at <headsets.com> where Respondent
markets and sells products which compete with those offered by Complainant. All
of Respondent’s advertisements are exclusively for Headsets.com. Respondent is
a direct competitor of Complainant.
Paragraph 15(a)
of 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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) 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
claims to have acquired common law rights in the HEADSETZONE mark based on
extensive use of the mark in commerce since at least 1998. Registration of a
mark with a governmental authority is unnecessary for Complainant to establish
rights in a mark if a common law mark has been established. See
McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed.
2002) (noting that the ICANN dispute resolution policy is “broad in scope” in
that “the reference to a trademark or service mark ‘in which the complainant
has rights’ means that ownership of a registered mark is not
required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy); see also Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name
Dispute Resolution Policy does not require “that a trademark be registered by a
governmental authority for such rights to exist”).
A common law
mark is established when a complainant’s mark becomes distinctive and acquires
secondary meaning. Complainant states that it has used the HEADSETZONE mark in
commerce for at least six years, including continuous use on Complainant’s
website at the <headsetzone.com> domain name and extensive marketing in
other media.
However, the
Panel determines that Complainant has failed to produce sufficient evidence
that it holds common law rights in the HEADSETZONE mark. See Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding
that prior UDRP precedent
did not support a finding of common law rights in a mark in lieu of any
supporting evidence, statements or proof (e.g., business sales figures,
revenues, advertising expenditures, number of consumers served, trademark
applications or intent-to-use applications)); see also Cyberimprints.com,
Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding
that Complainant failed to prove trademark rights at common law because it did
not prove the CYBERIMPRINTS.COM mark was used to identify the source or
sponsorship of goods or services or that there was strong customer
identification of the mark as indicating the source of such goods or services).
Furthermore, the
phrase “headsets zone” is comprised entirely of generic terms to which
Complainant cannot maintain exclusive rights. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000)
(finding that Complainant failed to show that it should be granted exclusive
use of the domain name <soccerzone.com>, as it contains two generic terms
and is not exclusively associated with its business); see also Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that
“seminar” and “success” are generic terms to which Complainant cannot maintain
exclusive rights); see also Lucky
Money, Inc. v. ilovesschool.com, FA 96383 (Nat. Arb. Forum Mar. 9, 2001)
(finding Complainant cannot claim exclusive common law rights to an expression
– Lucky Money – comprised of generic terms).
Complainant has
failed to show rights in the mark HEADSETZONE, pursuant to Policy ¶ 4(a)(i). As
Complainant has failed to satisfy the first element, it is unnecessary to
address the second and third elements.
Because
Complainant failed to establish the first element required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it
is Ordered that the <headsetszone.com> domain name not be
transferred from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
January 18, 2005
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