Trade name alone is insufficient to secure domain name

In Front Range Internet Inc v Murphy, National Arbitration Forum (NAF) panellist Paul A Dorf has refused to order the transfer of the domain name '' on the basis that the complainant failed to establish trademark rights in the name. Dorf stressed that a trade name alone, without any indication of common law or registered rights in a mark, does not grant standing under the Uniform Domain Name Dispute Resolution Policy (UDRP).

The respondent, David Murphy, registered '' in September 2001, indicating that the domain name was for sale and giving the impression that he was in the business of buying and selling generic domain name registrations. Front Range Internet submitted a complaint to NAF in February 2003. In its complaint, the company stated that it had been incorporated in the US state of Colorado in August 1995, and had also filed an application for registration of the trademark FRONT RANGE INTERNET, claiming the date of incorporation as its date of first use of the mark. Front Range did not substantiate its allegation that Murphy has no rights or legitimate interests in the disputed domain name.

Although Dorf found that Murphy had registered the domain name in bad faith, he denied Front Range's request for transfer on the basis that it had failed to prove all three necessary elements under Paragraph 4(a) of the UDRP. In particular, he stated that incorporation under a trade name is not sufficient to establish rights in a mark for the purposes of Paragraph (4)(a)(i). Similarly, a pending trademark application does not prove such rights. Accordingly, Front Range had not demonstrated any enforceable rights in the domain name.

In addition, Dorf stated that even if he was satisfied that Front Range did have enforceable trademark rights, he would still be compelled to decide against the company on the basis of Paragraph 4(a)(ii), which states that the complainant must explain "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". Front Range had provided no factual explanation as to why this was the case.

Mary Bleahene, FR Kelly & Co, Dublin

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