Claim Number: FA0111000102522
Complainant is HeadRoom Corporation, Bozeman, MT (“Complainant”)
“represented” by Ivy Scull, Marketing Manager of HeadRoom Corporation. Respondent is Peter Comitini d/b/a Peter Comitini Design, New York, NY (“Respondent”), Pro Se.
The domain name at issue is <HeadRoom.com>, registered with Internet Domain Registrars.
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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 26, 2001; the Forum received a hard copy of the Complaint on November 26, 2001.
On November 30, 2001, Internet Domain Registrars confirmed by e-mail to the Forum that the domain name <HeadRoom.com> is registered with Internet Domain Registrars and that Respondent is the current Registrant of the name. Internet Domain Registrars has verified that Respondent is bound by the Internet Domain Registrars 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 November 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 20, 2001 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@<HeadRoom.com> by e-mail.
A timely Response was received and determined to be complete on December 19, 2001.
On December 20, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it owns two (2) trademarks for “HEADROOM” registered with the United States Patent and Trademark Office as follows:
Mark Registration Number First Use In Commerce Registration Date Class
HEADROOM 1,799,023 11/15/92 10/19/93 9 - for
HEADROOM 1,800,571 11/15/92 1020/93 9- for
(plus graphic amplifiers and
of 2 headphones) signal
Complainant contends that it manufactures and sells headphone amplifiers, carrying cases and a large variety of headphones and related products upon which the subject mark is placed including but not limited to HeadRoom Little, HeadRoom Total Airhead, the HeadRoom Little More Power, the HeadRoom Cosmic, the HeadRoom Home, the HeadRoom Maxed Out Home, the HeadRoom Max and the HeadRoom BlockHead.
Complainant contends that it also intends to utilize this trademark on additional products shortly including HeadRoom Switchbox, the HeadRoom Basic, the HeadRoom Standard and a HeadRoom MP3 Player.
Complainant contends that the domain name <headroom.com> registered to Respondent is identical to its trademark. Complainant further contends that Respondent does not have a business name similar to or involving the word “headroom”, that he has never used the domain name in question to host any kind of Website whatsoever and that he does not offer any sort of goods or services relating to the word “headroom.”
Complainant further contends that Respondent has never been known by or associated with the word “headroom” and that it does not believe that Respondent is using the domain name for any purpose as it has been allegedly inactive since the time it was registered.
Complainant further contends that in 1997, Respondent and the President of Complainant spoke on the telephone in regard to Complainant’s interest in acquiring the domain name <headroom.com> and in that conversation Respondent offered to sell the domain name for $2,000 but that Complainant refused. Complainant further contends that in 1999, Respondent and Complainant’s president spoke again and that Respondent offered to sell the domain name for $5,000.
Respondent contends that it registered the domain name in question on June 11, 1997 for a “Headroom” web portal, that it has never offered same for sale to Headroom Corporation, that the domain name was registered in preparation for legitimate business purposes and that such a long period of time has passed between the registration and the Complaint with full knowledge of same by Complaint, that the Complaint is barred by the Doctrine of Laches.
Respondent further contends that Complainant has offered no evidence that Respondent had a bad faith intent when it registered the domain name or any evidence that Respondent registered the domain name to sell to Complainant, to prevent it from registering a domain name incorporating its trademark, that Respondent has engaged in a pattern of such activity, to disrupt its business or to benefit commercially from consumer confusion.
Respondent contends that he is a noted web developer, graphic designer, art director and journalist who has been in professional practice since 1982, that his clients have included many major international media corporations and that his work has been exhibited in major museums.
Respondent further contends that he registered the domain name in connection with his “Headroom Project” which has been in development since 1997, and of which Complainant has been fully aware.
Respondent claims that he is utilizing and will continue to utilize and develop the domain name in connection with “The Headroom Project” which is an educational game site and web portal for kids – “a place where learning is game play.” Respondent claims that animated characters lead kids through an interactive game show experience where they can earn points and learn a variety of subjects. Respondent claims that his idea revolves around a series of characters which are floating heads that “live” in the “HeadRoom” and that a prototype game featuring one of the feature head characters called “Mr. Zipperhead” is posted on the Website. Respondent has attached hard copies of representative screens and contends that <headroom.com> will evolve into a development of many such characters and web portal features in the future. Respondent claims that this is evidence meeting the standard of demonstrable preparations set forth in ICANN Rule 4(c)(i).
Respondent further contends that his use of “headroom” is radically different from the general term “headroom” which may be common vernacular in the stereo and audio industry in which Complainant uses the name.
Respondent contends that “headroom” is defined as either (1)“vertical space available to allow easy passage under something” or (2) “the capacity of a system to produce loud sounds without distortion.”
Respondent contends that “headroom” is thus a generic term and claims that search engine inquires for “headroom” produce tens of thousands of results, few of which relate to Complainant.
Respondent does not dispute that Headroom Corporation may have some trademark rights in regard to Class 9 audio products. Respondent contends that he utilizes the domain name for non-competing goods and services as do numerous other companies including one having a Federal Trademark Registration for “Headroom” for computer technology and further that at least nine (9) other companies including a beauty salon, a recording studio and a pipe shop use the word “headroom” as the root of their business name.
Respondent contends that it has never engaged in the business of selling or manufacturing audio equipment or any other Class 9 goods or services and thus has not in any way infringed upon the rights of Complainant.
Respondent further claims that the doctrine of laches prevents Complainant from being successful here since it knew about this registration since as early as 1997 and took no action until this current Complaint was filed many years later.
Respondent claims that it takes time to develop and create a game prototype and his has been in the works since 1997 as evidenced by materials submitted. The concept was publicly tested on the Internet in 1997 and 1998 all of which Complainant was aware.
Respondent further claims that the domain name was registered in connection with a bona fide offering of services, the development of Headroom, an educational web portal for kids, that Respondent has no competitive interests with Complainant and he has in no way profited from the registration of the domain name to Complainant’s detriment, that there has been no evidence or allegation of actual consumer confusion, that Complainant’s registration has not been disruptive since they operate sites at headroom.biz and headphone.com, respectively.
Respondent further claims that “headroom.net”, “headroom.org”, “headroom.cc” and “headroom.info” have been registered by third parties, not the Respondent or Complainant in 1998 and in 2001 without the preemption or objection by Complainant.
Respondent claims that he has never contacted HeadRoom Corporation at any time to offer the name for sale, but rather that HeadRoom Corporation contacted him requesting to purchase same.
Respondent contends that it was not aware of the existence of Complainant at the time of the registration but was contacted by the President of Complainant for purchase of the domain name.
Lastly, Respondent contends that his registration and use of <headroom.com> is fair use in connection with a purpose consistent with his professional experience.
Complainant has met its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name registered by Respondent is identical to a trademark in which Complainant has rights. U.D.R.P. 4(a)(i).
Complainant has failed to sustain its burden to prove by a preponderance of the credible, relevant admissible evidence that Respondent has no rights or legitimate interests in respect to the domain name in question. U.D.R.P.4(a)(ii).
Complainant has failed to sustain its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent’s domain name has been registered and is being used in bad faith. U.D.R.P. 4(a)(iii).
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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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
Respondent does not dispute that Complainant owns trademark rights in and to “headroom” and that same is registered with the U.S. Patent and Trademark Office, Registration Nos. 1,799,023 and 1,800,571, registered on or about October 19, 1993 and October 26, 1993 respectively nor does Respondent seem to dispute that the pertinent portion of the domain name in question “headroom”  is identical to that mark. Thus, Complainant has sustained its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name registered by Respondent is identical to a trademark in which the Complainant has rights. The requirements of U.D.R.P. 4(a)(i) are met.
RIGHTS OR LEGITIMATE INTERESTS
Complainant also bears the burden in this proceeding to prove that Respondent has “no rights or legitimate interests in respect of the domain name.” Complainant submits that Respondent does not have a business name similar to or involving the word “headroom”, that he has never used the domain name <headroom.com> to host any kind of Website whatsoever and that he does not offer any sort of goods or services relating the word “headroom.” Complainant also submits that it does not believe that Respondent is using the domain name for any purpose as it has been inactive since the time he registered. However, Complainant has failed to submit any evidence to support these claims.
The only “evidence” submitted by Complainant is a third party recounting of two (2) alleged telephone conversations between Respondent and the President of Complainant, one in 1997 and one in 1999. The information regarding these conversation is recounted by third party, Marketing Manager of Complainant, Ivy Scull. The Record does not include any Affidavit or Declaration from the President of Complainant, Mr. Tyll Hertsens, the person who allegedly spoke with Respondent in 1997 and 1999. Although the rules of evidence are not inflexible in these proceedings, this Panel cannot lend any credence to the substance of the alleged telephone conversation between Respondent and the President of Complainant in 1997 and 1999 as alleged by Complainant when such are presented in this manner, especially in light of the specific denials made by Respondent, one of the alleged parties to that conversation.
On the other hand, Respondent has submitted a Response, signed by the Respondent himself attesting to the substance of those conversations as well as to some detail regarding his preparation, use and development of a Website connected to the domain name in question.
Based upon this Record, this Panel is compelled to find that Respondent does have rights and legitimate interests in respect to the domain name in question. Based upon an evaluation of all of the evidence presented, Respondent has demonstrated that before any notice to it of the dispute, it engaged in demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. U.D.R.P. 4(c)(i). Further, this Panel believes that it may fairly be said that the Respondent is making a legitimate, non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly direct customers or to tarnish the trademark and service mark of Complainant. U.D.R.P. 4(c)(iii).
Under all of these circumstances, Complainant has failed to sustain its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent has no rights or legitimate interests in respect to the domain name in question. U.D.R.P. 4(a)(ii).
REGISTRATION AND USE IN BAD FAITH
Complainant has the burden in these proceedings to prove by a preponderance of the credible, relevant and admissible evidence that Respondent’s domain name has been registered and is being used in bad faith.
Complainant has submitted copies of its U.S. Patent and Trademark Office Certificates of Registration for two (2) registrations of the mark “HEADROOM”. Both parties acknowledge that the domain name in question was not registered until June 11, 1997, several years after the U.S. Patent and Trademark Office registrations of “HEADROOM” on October 19, 1993 and October 26, 1993 respectively. Although Respondent claims that he was unaware of these registrations or even the existence of Complainant, it can be fairly said under U.S. Trademark Law, as well as that of most other jurisdictions, that Respondent had constructive notice of the existence of the corporation and its U.S.P.T.O. trademark registrations. If Respondent did not know, he should have known of such and will be held to have known.
However, this does not mean that the domain name was registered in bad faith. Respondent has set forth a number of arguments and substantive evidence of record which substantially establishes that the domain name was not registered in bad faith. Respondent’s use and further anticipated use of the domain name for the provision of goods and/or services are in an area completely different from those of Complainant. Further, Respondent has produced substantial evidence that numerous third parties maintain trademark registrations in the U.S., domain name registrations and other uses of marks identical to and/or confusingly similar to the mark of Complainant. Respondent also makes at least plausible arguments that the mark is generic or otherwise not protectable.
Thus, Complainant has failed to establish that the domain name in question has been registered in bad faith. While this Panel need not decide the issue, there is also no sufficient evidence in this Record upon which a finding of use in bad faith may be made. Although Respondent’s development of its Webiste and uses may not be the most rapid, there is no obligation under the UDRP or general trademark law that such uses be completed overnight.
The only “evidence” of “use in bad faith” submitted by Complainant, is the bald allegation that Respondent has not used the domain name for a Website at all. If this Panel were able to conclude based upon this Record that there had been no use whatsoever since the registration and/or on July 11, 1997, this Panel might be prepared to find that there is registration use in bad faith. However, this Record does not reflect same. Under all these circumstances, Complainant has failed to prove by a preponderance of the credible, relevant and admissible evidence that Respondent’s domain name has been registered and is being used in bad faith. U.D.R.P. 4(a)(iii).
Respondent registered the domain name in question on June 11, 1997. Both parties acknowledge that they spoke twice, sometime in 1997 and some time in 1999 regarding this domain name, but neither allege that Complainant in such conversations claimed that the domain name infringed on its marks and/or violated the U.D.R.P. Further there is no evidence in this Record that Complainant took any action whatsoever to stop Respondent’s use of the domain name until it filed this Complaint on November 26, 2001, four years and four and one-half months after the registration and at least three years and ten months after the first telephone conversation between the parties.
During this long period of inactivity on the part of Complainant, Respondent claims that it actively utilized the domain name as described hereinabove. Complainant disputes same but submits no evidence in support of said claim.
Respondent argues that even if Complainant sustains its burdens of proof under U.D.R.P. 4(a)(i), (ii) and (iii), that its claim is still barred by the Doctrine of Laches.
Trademark law is peculiarly equitable in nature and laches is a purely equitable doctrine. Courts generally weigh several factors in a trademark laches analysis such as 1) length of delay, 2) excuse(s), if any, for the delay, 3) degree and extent of infringer’s reliance on mark owner’s inaction, 4) degree of intent in the infringement, 5) strength of the mark, 6) likelihood of confusion, and 7) harm to the parties from denial or granting of relief. Gilson, Trademark Law and Practice, §8.12(a)-(b) (Matthew Bender).
Since Complainant has not met its burden of proof for two (2) of the three (3) essential elements of a U.D.R.P. claim, this Arbitrator need not decide whether Respondent is entitled to the benefit of the defense of the Doctrine of Laches. However, it can be observed that the delay here was for a very long time and the Record includes no excuse for same.
The relief requested by Complainant is denied.
M. KELLY TILLERY, ESQUIRE. PANELIST
Dated: December 27, 2001
 The Record does not indicate that Ivy Scull is an attorney.
 The “.com” is irrelevant for the purposes of this analysis.
 Respondent’s acknowledgement of Complainant’s trademark rights, at least in Class 9, is inconsistent with his additional claim that the “mark” is generic. This Arbitrator need not determine whether “HEADROOM” is generic, or merely descriptive (with or without secondary meaning) suggestive or otherwise. However, it is worth noting that the Record here includes a number of uses of the “mark” “HEADROOM” by Complainant itself in its promotional materials as a noun, rather than the appropriate use of a mark as an adjective. See, e.g. Complainant’s Exhibit “G” – 2000 Headroom Catalog which entitled “Just a Few of The Reasons to Get a Headroom” and includes section on “Top Ten Reasons To Get a Headroom”, “What’s a Headroom?” and “Buying a Headroom.” [Emphasis added].
 Neither party gives a specific date for the 1997 conversation.
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