|
National
Arbitration Forum
ZZounds Music, LLC.
v. Zounds c/o Mark LaForge
Claim Number: FA0610000817093
PARTIES
Complainant is ZZounds Music,
LLC. (“Complainant”), represented by Brian E. Banner, of Rothwell,
Figg, Ernst & Manbeck, P.C., 1425 K Street NW, Suite 800, Washington, DC
20005. Respondent is Zounds c/o Mark LaForge (“Respondent”),
represented by Zak Muscovitch, of Muscovitch & Associates Barristers
& Solicitors, 101 Scollard Street, Toronto, ON M5R 1G4 Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zounds.com>,
registered with Network Solutions, 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.
Hon. Nelson A. Diaz, Terry F.
Peppard, and Diane Cabell as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint
to the National Arbitration Forum electronically on October 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 10, 2006.
On October 10, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <zounds.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network Solutions, Inc. has verified
that Respondent is bound by the Network Solutions, 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 October 17, 2006, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of November 6, 2006 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@zounds.com by e-mail.
A timely Response was received and
determined to be complete on November 3, 2006.
A timely Additional Submission from
Complainant was received and determined to be complete on November 8, 2006.
A timely Additional Submission from
Respondent was received and determined to be complete on November 13, 2006.
On
November 10, 2006, pursuant to Complainant’s request to have the
dispute decided by a three-member Panel,
the National Arbitration Forum appointed Hon. Nelson A. Diaz, Terry F.
Peppard, and Diane Cabell as Panelists.
RELIEF SOUGHT
Complainant requests that the
domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that it has
trademark rights in the ZOUNDS mark through an Intent to Use application with
the United States Patent and Trademark Office (“USPTO”) (App. No. 76/655,469
filed February 21, 2006). Previous panels have found that registration of a
trademark is unnecessary, provided that common law rights in the mark can be
shown through secondary meaning associated with the mark. Complainant also
asserts rights to the ZOUNDS! and ZZOUNDS marks through its registrations of
the ZOUNDS! mark (Reg. No. 2,085,286 issued August 5, 1997) and the ZZOUNDS
mark (Reg. No. 2,209,520 issued December 8, 1998) with the USPTO.
Complainant contends that
Respondent is not commonly known by the <zounds.com>
domain name pursuant to Policy ¶
4(c)(ii). Complainant contends that there is no evidence that the individual
listed as the Administrative and Technical contact for the disputed domain
name, Mark LaForge, is associated with any entity using “Zounds” as its
business or trade name. Complainant further contends that there is no evidence
presented by Respondent or otherwise that Respondent has ever used the disputed
domain name in any manner. Complainant also asserts that Respondent is not
authorized to use any of Complainant’s marks. Complainant asserts that
Respondent is not actively using the disputed domain name, and as such as
demonstrated that it lacks rights and legitimate interests in the <zounds.com> domain name.
In its Additional Submission,
Complainant challenges Respondent’s assertion that the <zounds.com> domain name is made up of a common, generic
term. Complainant asserts that by definition and example “zounds” is an
“archaic interjection” that today is used only in fanciful and arbitrary
manners. Complainant also argues that the use of “zounds” by Shakespeare
hundreds of years ago is not evidence of a modern-day common and generic use.
Complainant
contends that Respondent is holding the disputed domain name to intentionally
attract, for potential commercial gain, Internet users to its website by
creating a likelihood of confusion with Complainant as to the source,
sponsorship, affiliation or endorsement of its website under Policy ¶
4(b)(iv). In its Additional Submission, Complainant further contends that
actual confusion exists between Complainant’s <zzounds.com> domain name
and Respondent’s <zounds.com> domain name.
In its Additional Submission,
Complainant states that it was unaware of any negotiations between Respondent
and Complainant’s predecessor in interest to buy or sell the disputed domain
name. Complainant states that it has since contacted its predecessor in interest
and that this individual stated that while an offer was made to Respondent to
purchase the disputed domain name for $25,000, Respondent instead wanted a
purchase price of $150,000. Complainant contends that Respondent’s offer to
sell the <zounds.com> domain name for such an amount of money
constitutes bad faith registration and use under Policy ¶ 4(b)(i)
In its
Additional Submission, Complainant re-asserts its reasons for bringing the
instant Complaint and argues that a finding of reverse domain name hijacking is
not warranted.
B. Respondent
Respondent
asserts that Complainant has failed to establish rights in the ZOUNDS mark.
Respondent also asserts that Complainant does not hold sufficient rights in the
ZOUNDS! and ZZOUNDS marks as it was not the original registrant of those marks,
and that only the ZOUNDS! mark was used prior to the registration of the
disputed domain name. The ZOUNDS! mark was previously used by The University
of New Mexico in connection with a monthly radio programming guide, and
Complainant did not acquire rights in the ZOUNDS! mark until February of 2006.
Respondent further asserts rights in the ZOUNDS mark through its use of
the mark in connection with its music retail business in Canada since April 7, 1995.
Respondent asserts that it does
have rights and legitimate interests in the disputed domain name as it plans to
use the disputed domain name in connection with its business. Respondent also
asserts that its business operates under the name “Zounds” and provides evidence
on this point. Respondent asserts that
“zounds” is a common and generic term based on its contention that “zounds” is
a common word found in the dictionary and was even used twenty-one times in the
works of William Shakespeare.
Respondent contends that its rights
and legitimate interests in the mark are further shown through Complainant’s
repeated attempts to purchase the disputed domain name from Respondent.
Respondent submits evidence to support this contention in the exhibits attached
to its Response.
Respondent
asserts that it has not used the disputed domain name for any commercial gain
through a likelihood of confusion with Complainant’s mark. Respondent further
asserts that it registered the disputed domain name with a legitimate business
interest.
Respondent
further asserts that its good faith is shown through Complainant’s offer to buy
the disputed domain name, and conversely, even if Respondent did offer to sell
the disputed domain name to Complainant, the offer to sell a disputed domain
name consisting of a common, generic term can not be considered bad faith.
Respondent
has alleged that Complainant has engaged in reverse domain name hijacking
through the filing of the instant Complaint as Respondent contends Complainant knew or should have known that it was unable to
prove that Respondent registered and is using the <zounds.com> domain
name in bad faith. Respondent asserts that Complainant’s filing of this
Complaint accordingly qualifies as reverse domain name hijacking.
FINDINGS
The Panel finds that Respondent’s
domain name, <zounds.com>, is not confusingly similar to
Complainant’s marks ZOUNDS! and ZZOUNDS.
The Panel also finds that
Respondent’s inactive use of the disputed domain name is not sufficient
evidence to constitute bad faith registration and use under Policy ¶ 4(a)(iii).
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
In
order for Complainant to satisfy the requirements of Policy ¶ 4(a)(i), the
Panel must find trademark rights that pre-date the registration of the disputed
domain name. See Phoenix Mortgage Corp. v. Toggas, D2001-0101
(WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that
Complainant’s rights predate Respondent’s
registration . . . of the domain name”). Respondent asserts that Complainant does not have
adequate rights in its asserted marks, because Complainant acquired its rights
in those marks from predecessors in interest subsequent to Respondent’s
acquisition of its rights in Respondent’s mark. The Panel declines to decide
this issue because the priority of Complainant’s marks is not at issue as
Complainant’s ZZOUNDS and ZOUNDS! marks are not confusingly similar to the
disputed domain name, <zounds.com>. Because the Panel
finds, as discussed below, that the term zounds is a common term, Complainant’s
rights in the distinctive variations of that common term, ZZOUNDS and ZOUNDS!,
do not extend to confer rights in the term zounds. See B2BWorks,
Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat. Arb. Forum June 5,
2001) (holding that the complainant did not have exclusive rights to use of the
terms “B2B” and “Works” in association with other words, even with a registered
trademark for B2BWORKS).
Rights or Legitimate Interests
The Panel credits Respondent’s
assertion that the <zounds.com> domain name is comprised of a common term and determines
that Respondent therefore has rights or legitimate interests in the disputed
domain name. See SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb.
Forum May 25, 2000) (finding that the 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 Lucky
Money, Inc. v. ilovesschool.com, FA 96383 (Nat. Arb. Forum Mar. 9, 2001)
(finding the complainant cannot claim exclusive common law rights to an
expression, “Lucky Money,” comprised of generic terms). As the first to
register the domain name, the Respondent is entitled to retain it. CRS
Technology Corp. v. CondeNet, FA 93547 (Nat. Arb. Forum March 28, 2000).
Further, the Panel finds that
Respondent has demonstrated adequate preparations to use the disputed domain
name, including preparation of stationary, business cards, and use of email
through the domain, and finds rights and legitimate interests under Policy ¶ 4(a)(ii).
See AutoNation Holding Corp. v. Alawneh, D2002-0058 (WIPO May 1, 2002)
(finding that prior to having received notice of the dispute, the respondent
had made demonstrable preparations to use the disputed domain name by submitted
“substantial, overwhelming and undisputed evidence” of those preparations); see
also SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding
that the respondent had rights and legitimate interests in the domain name
where he began demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services).
Registration and Use in Bad Faith
Complainant offers nothing more
than mere speculation and conjecture regarding Respondent’s bad faith
registration and use of the disputed domain name. The Panel finds that
Complainant failed to meet its burden of proof of bad faith registration and
use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide,
Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding
that the complainant failed to establish that respondent registered and used
the disputed domain name in bad faith because mere assertions of bad faith are
insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also
Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum
Jan. 16, 2003) (finding that general allegations of bad faith without
supporting facts or specific examples do not supply a sufficient basis upon
which the panel may conclude that the respondent acted in bad faith).
First,
the Panel finds that because Respondent’s registration of the disputed domain
name pre-dates any use of Complainant’s marks, Respondent could not have
registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See
Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc.,
D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent
registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing
AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad
faith where the respondent registered the domain name in question before
application and commencement of use of the trademark by the complainant).
Moreover,
the Panel further finds that Respondent did not register the <zounds.com>
domain name in bad faith because Respondent’s disputed domain name is
comprised of a common, generic term. See Canned Foods, Inc.
v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding
that, where the domain name is comprised of a generic term, it is difficult to
conclude that there was a deliberate attempt to confuse on behalf of the
respondent, and stating that “[i]t is precisely because generic words are
incapable of distinguishing one provider from another that trademark protection
is denied them”); see also Vitello v. Castello, FA 159460 (Nat. Arb.
Forum July 1, 2003) (“As to both registration and use, the generic nature of
the disputed domain name itself rebuts any allegation by Complainant that
Respondent registered or used the disputed domain name in bad faith.”). The
Panel also finds that Respondent’s inactive use of the disputed domain name is
not enough evidence to constitute bad faith registration and use under Policy ¶
4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia
Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the
respondent has not attempted to sell a domain name for profit, has not engaged
in a pattern of conduct depriving others of the ability to obtain domain names
corresponding to their trademarks, is not a competitor of the complainant
seeking to disrupt the complainant's business, and is not using the domain name
to divert Internet users for commercial gain, lack of bona fide use on
its own is insufficient to establish bad faith); see also Vidiots
Delight, Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding
no bad faith where the respondent was using the domain name in connection with
its business even though no website was yet developed).
Finally,
the Panel finds that merely considering selling the domain name is not
sufficient evidence of bad faith registration and use of the domain name. See
Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov.
15, 2000) (finding that considering or offering to sell a domain name is
insufficient to amount to bad faith under the Policy; the domain name must be
registered primarily for the purpose of selling it to the owner of a
trademark for an amount in excess of out-of-pocket expenses); see also LifePlan
v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he mere
offering [of the domain name for sale], without more, does not indicate
circumstances suggesting that Respondent registered the domain name primarily
for the purpose of selling, renting, or transferring the domain name to the
Complainant as required under [Policy ¶ 4(b)(i)].”).
Reverse Domain Name Hijacking
The
Panel finds that Complainant knew or should have known that its ZZOUNDS and
ZOUNDS! marks are not identical or confusingly similar to the domain name <zounds.com>,
that the Respondent has rights and legitimate interests in the domain name, or
that Complainant was unable to prove that Respondent registered and is using
the <zounds.com> domain name in bad faith. Thus, the Panel finds
that Complainant’s filing of this Complaint qualifies as reverse domain name
hijacking and renders a finding in favor of Respondent. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that to prevail
on a claim of reverse domain name hijacking, the respondent must show that the
complainant brought the claim in bad faith despite the knowledge that the
respondent has an unassailable right or legitimate interest in the disputed
domain name, or that the respondent lacks the requisite bad faith registration
and use of the disputed domain name); see also Aspen Grove,
Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that when the
complainant knows it has no rights in the mark but brings a complaint despite
this fact, the complainant has acted in bad faith and attempted Reverse Domain
Name Hijacking which constitutes an abuse of the administrative proceeding).
DECISION
Complainant having failed to
establish any of the three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
____________________
Hon. Nelson A. Diaz,
Terry F. Peppard, and Diane Cabell as Panelists.
Dated: November 24, 2006.
| 
