Generic Top Level Domain Name (gTLD) Decisions

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