national arbitration forum

DECISION

Nosworthy Telecommunications Distributor, Inc. v. Headsets.com, Inc.

Claim Number:  FA0412000381227

PARTIES

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.

PANEL

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.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

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.

FINDINGS

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.

DISCUSSION

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.

Identical and/or Confusingly Similar

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.

DECISION

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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