National Arbitration Forum

DECISION

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 further finds that Respondent is commonly known by the domain name for purposes of Policy ¶ 4(c)(ii) and has rights or legitimate interests in respect of the domain name.

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.

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