DECISION
Front Range Internet, Inc. v.
David Murphy a/k/a This Domain For Sale
Claim Number: FA0302000145231
PARTIES
Complainant is Front
Range Internet, Inc., Fort Collins, CO, USA (“Complainant”) represented
by Jane Osbourne, of Front Range Internet, Inc.. Respondent is
David Murphy a/k/a This Domain For Sale, Dublin, IRELAND
(“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <frontrangeinternet.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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on February 10, 2003; the Forum received a hard copy of the
Complaint on February 13, 2003.
On February 11, 2003,
Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the
Forum that the domain name <frontrangeinternet.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 February 19, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of March 11, 2003 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@frontrangeinternet.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 Forum transmitted to the parties a
Notification of Respondent Default.
On March 20,
2004,pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as
Panelist.
Having reviewed the
communications records, the Administrative Panel (the "Panel") finds
that the 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 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 <frontrangeinternet.com>
domain name is identical to Complainant’s FRONT RANGE INTERNET mark.
2. Respondent does not have
any rights or legitimate interests in the <frontrangeinternet.com>
domain name.
3. Respondent registered
and used the <frontrangeinternet.com> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Front Range
Internet, Inc., is incorporated in the state of Colorado, U.S. Complainant
filed its Articles of Incorporation with the Secretary of State for the State
of Colorado on August 1, 1995. This was also the date Complainant listed as
first using the FRONT RANGE INTERNET mark on its application for registration
of the trademark within the state of Colorado.
Respondent, David Murphy
a/k/a This Domain For Sale, registered the <frontrangeinternet.com>
domain name on September 2, 2001. Respondent posts no original content at the
disputed domain name other than to note that the domain name registration is
for sale.
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
Under the UDRP,
incorporation under a trade name is not sufficient to establish “rights” in a
mark for purposes of Policy ¶ 4(a)(i). Mere trade names, without any indication
of common law or registered rights in a mark, do not grant standing under the
UDRP. See Powrachute Inc. v. Buckeye Indus., AF-0076 (e-Resolution, May
30, 2000) (dismissing a Complaint where Complainant failed to contend, provide
evidence, or give arguments to the effect that it had either a registered
trademark or service mark in POWRACHUTE or any similar name, or that it had a
common law trademark in the name. The only evidence provided, that it was
incorporated under the name, is insufficient to create a trademark).
Likewise, a trademark
application alone is insufficient to establish rights in a mark. While the UDRP
does not require a Complainant to prove ownership of a valid trademark
registration, absent such a registered mark Complainant must demonstrate, at a
minimum, common law rights in its mark. See Amsec Ent. v. McCall,
D2001-0083 (WIPO Apr. 3, 2001) (finding that Complainant’s pending trademark
applications do not establish any enforceable rights to the mark until a
trademark registration is issued); see also Ode v. Intership Ltd.,
D2001-0074 (WIPO May 1, 2001) (stating that “We are of the unanimous view that
the trademark must predate the domain name”).
In the present dispute,
Complainant alleges that Respondent’s <frontrangeinternet.com> domain
name is identical to Complainant’s FRONT RANGE INTERNET mark. In comparing the
domain name and the mark, it is apparent that the only difference between the
domain name and Complainant’s alleged mark is the inconsequential elimination
of the spaces between the words in Complainant’s mark. However, the issue under
Policy ¶ 4(a)(i) in this dispute does not hinge on determining identicality or
confusing similarity, but whether Complainant has any enforceable rights in the
FRONT RANGE INTERNET mark.
In support of its
contentions, Complainant submitted a copy of its articles of incorporation in
the state of Colorado under the trade name “Front Range Internet, Inc.” and its
application for a trademark registration in Colorado for the FRONT RANGE
INTERNET mark. Neither, standing alone, are sufficient evidence that
Complainant has enforceable rights in the FRONT RANGE INTERNET mark.
What Complainant’s
sparse Complaint lacks is some indication that it has accrued common law rights
in its mark, some sign that the consuming public relates Complainant and its
mark with the goods produced under that mark, or that there is some secondary
meaning associated with the mark. By failing to demonstrate to the Panel that
Complainant has enforceable rights in the FRONT RANGE INTERNET mark, it has
failed to meet its burden under Policy ¶ 4(a)(i). See Cyberimprints.com,
Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that,
without further evidence of common law trademark, Complainant did not establish
rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by
registering its company name CYBERIMPRINTS.COM, INC. with the California
Secretary of State); cf. Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb.
Forum Aug. 17, 2000) (finding common law rights in a mark where its use was
continuous and ongoing, and secondary meaning was established).
Accordingly, the Panel
finds that the Complainant has no enforceable rights in the FRONT RANGE
INTERNET mark under Policy ¶ 4(a)(i), and this element is not satisfied.
Rights or Legitimate
Interests
Even were
the Panel to assume that Complainant did have enforceable rights in the FRONT
RANGE INTERNET mark, it would be compelled to find against Complainant on
Policy ¶ 4(a)(ii). Rule 3(b)(ix)(2) of the UDRP states in no uncertain terms
that Complainant must describe, in accordance with the Policy, the grounds on
which the complaint is made, in particular, “why the Respondent should
be considered as having no rights or legitimate interests in respect of the
domain name that is the subject of the complaint.” See Graman USA Inc. v.
Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003)
(finding that absent a showing of any facts by Complainant that establish
Respondent lacks rights or legitimate interests in the disputed domain name,
the Panel may decline to transfer the disputed domain name).
On this, as
on each element under Policy ¶ 4(a), Complainant carries the burden of proof. See
TotalFinaElf E&P USA, Inc. v. Farnes, NAF 117028 (Nat. Arb. Forum Sept.
16 2002) (finding that in order to bring a claim under the Policy, Complainant
must first establish a prima facie case); see also Lush LTD v. Lush
Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that
Complainant must allege facts, which if true, would establish that Respondent
does not have any rights or legitimate interests in the disputed domain name).
In support of its case on this element, Complainant asserts that:
“The
Respondent should have no rights to this domain name because the name is
trademarked by Front Range Internet, Inc., a corporation in good standing in
the state of Colorado.”
As stated
under “Identical and/or Confusingly Similar,” supra, Complainant’s only
evidence of rights in the FRONT RANGE INTERNET mark comes from its trademark
application with the state of Colorado and its Articles of Incorporation, filed
in that same state. Under Policy ¶ 4(a)(ii), Complainant now seeks to rely upon
these two items alone as prima facie evidence that Respondent has no
rights or legitimate interests in the disputed domain name. This is simply not
possible.
Respondent
appears to be in the business of buying and selling generic domain name registrations.
This fact, standing alone, is not enough to warrant a finding that Respondent
has no rights or legitimate interests in the disputed domain name. In some
circumstances, the trading of domain name registrations is considered a bona
fide offering of goods and services. See Fifty Plus Media Corp. v. Digital
Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that
Complainant failed to prove that Respondent had no rights in the domain name
where Respondent is an Internet business which deals in selling or leasing
descriptive/generic domain names); see also General Mach. Prod. Co. v. Prime
Domains, FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding for Respondent,
who was in the business of identifying domain names comprised of generic or descriptive
terms, registering those domain names, selling them to interested parties, and
developing websites using those domain names for clients. Respondent rebutted the argument that it had
no legitimate interest in the domain name <craftwork.com> since the name
had not acquired distinctiveness, and instead, was merely generic and
descriptive at the time of registration).
Moreover,
even if the Panel were to assume that Complainant had enforceable rights in its
mark, those rights alone do not operate as a bar precluding use by any other
domain name Registrant. If confronted by a valid mark, the strength of that
mark, geographical concerns, and the type of field or industry in which a
domain name Registrant operates are all factors to consider in determining
Respondent’s rights or legitimate interests in its domain name. Without any
substantiated factual allegations to rely upon, the Panel is unwilling to jump
to the broad conclusion that Complainant has exclusive rights to the FRONT
RANGE INTERNET mark online, solely on the basis of Complainant’s undefined
operations in the state of Colorado. See Goldline Int’l, Inc. v. Gold Line,
D2000-1151 (WIPO Jan. 4, 2001) (finding that Respondent could have legitimate
interest in developing a mark identical to Complainant’s where mark was weak
and Respondent operated in unrelated field); see also Graman USA Inc. v.
Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003)
(finding that Respondent could maintain rights in a similar mark as Complainant
because Complainant and Respondent were not in the same field of business, and
therefore not competitors).
Accordingly,
the Panel finds that Complainant has failed to establish a prima facie case
in compliance with Rule 3(b)(ix) and Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
As
Complainant fails to make a prima facie case against Respondent pursuant
to Policy ¶¶ 4(a)(i) and (ii), the Panel need not continue on to analyze the
merits of Complainant’s argument under Policy ¶ 4(a)(iii). See Creative Curb
v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because Complainant must prove all three elements under the
Policy, Complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary).
The Panel
thus finds that Respondent registered and used the <frontrangeinternet.com>
domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
DECISION
As the Complainant has failed to prove all
three elements under Section 4(a) of the Policy, the Complainant’s request for
transfer is DENIED.
Honorable
Paul A. Dorf (Ret.) Panelist
Dated: April 4, 2003
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