Complainant is Railroad Earth, LLC of Los Angeles, California, United States of America (“United States”), represented by King, Holmes Paterno & Soriano, LLP, United States.
Respondent is Brian Ross and Ross Artist Management, Inc. of Santa Monica, California, United States, represented by Steven Rinehart, United States. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with TierraNet d/b/a DomainDiscover (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2017. On January 11, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On January 11, 2017, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondents are listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Response was filed with the Center on February 1, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 6, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On February 2, 2017, Complainant submitted an unsolicited Reply to Respondent’s Response (“Complainant’s Reply”). On February 10, 2017, Respondent submitted an unsolicited Response to Complainant’s Reply. In its discretion, the Panel has considered these unsolicited filings. 4. Factual Background
Complainant is an American “jam band” which has been touring and recording music for more than 15 years. According to the Complaint, the band Railroad Earth is “famous.” The band’s first album, The Black Bear Sessions, was released in June 2001.
Respondent Brian Ross is the former manager of the Complainant band. A dispute evidently arose between Ross and the band, because a Mutual Release and Settlement Agreement was executed effective March 9, 2014. In that Settlement Agreement, which contains an “integration” or “entire agreement” clause, Complainant agreed to pay certain payments to Respondent, and Respondent agreed to accept such payments as full compensation for “any commissions, loans, advances, expenses, damages or other funds that may have become due and payable under the Management Agreement, and any of [Complainant’s] rights title and interests in and to its intellectual property, copyrights, trademarks, or otherwise…”
The Domain Name was registered by Respondent on January 23, 2001. The Domain Name was registered by Respondent on March 16, 2004.
The Parties differ in significant respects as to the formation of the band and the registration of the Domain Names. According to Complainant, the band hired Ross as its manager and instructed him to register the Domain Names on behalf of the band. In the Complaint, Complainant alleges that the band “was formed and first began performing in 2001 in Stillwater, New Jersey.” In Complainant’s Reply, Complainant alleges that the band members “began working together as early as 1999, recording songs as early as late 2000, and began playing publicly in May 2001.” According to Complainant’s Reply, the band members formed a limited liability company (LLC) in 2001 and that the members’ “[c]ommon law trademark rights were established in 1999 and later transferred to the LLC.” Complainant holds several United States Patent and Trademark Office (“USPTO”) Registrations for the mark RAILROAD EARTH. These marks were registered on May 19, 2015, and they show a first use in commerce of June 2001.
By contrast, Respondent contends that he formed the band. According to the Response:
At the time Respondent registered [ in January 2001], the band Railroad Earth had not yet been formed and had no members. The Respondent formed the band Railroad Earth only after registering by inviting select musicians individually for the sole purpose of forming the band Railroad Earth.
Respondent also states that he “previously used the mark RAILROAD EARTH in connection with another music production before the band Railroad Earth was even formed” and before he registered either Domain Name. In support of this assertion, Respondent annexes to the Response a screenshot concerning the soundtrack to the film Big Eden (2000), which credits several of the songs to “Railroad Earth.”
At some point in 2015, Complainant asked Respondent to transfer the Domain Names. It is alleged that Respondent would not agree to do so without the payment of an additional USD 15,000. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied all three elements of the Policy for a transfer of both Domain Names. According to Complainant, Respondent had registered them initially in his fiduciary capacity as band manager, and that Respondent agreed under the March 2014 Settlement Agreement to relinquish control of the Domain Names. B. Respondent
Respondent disputes Complainant’s alleged sequence of events, and argues that this is in essence a contract dispute rather than a clear case of cybersquatting amenable to resolution under the Policy. Moreover, Respondent seeks a finding of reverse domain name hijacking against Complainant, on the basis that Complainant has rendered a false account of the Parties’ relationship, and because a member of the Complainant band recently – during the course of this proceeding – altered the content of the band’s Wikipedia page to delete all references to Respondent in the band’s history. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights, through registration and use, in the mark RAILROAD EARTH. The Domain names are identical to that mark.
Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In view of the Panel’s conclusion regarding “bad faith” in the next section, it is unnecessary for the Panel to address the “rights or legitimate interests” issue. C. Registered and Used in Bad Faith
For each of the Domain Names in question, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel cannot conclude from this record that Complainant has satisfied its burden of proving that the Domain Names were registered and used in bad faith. According to Complainant, Respondent was hired as its band manager and was then instructed to register the Domain Names on behalf of the Complainant band. Respondent Ross flatly denies this alleged sequence of events, and produces some evidence that he registered the Domain Names after having made his own use of the RAILROAD EARTH mark in connection with another project and before the Complainant band was even formed.
The Panel is also dubious about Complainant’s alleged timeline. In the Complainant’s Reply, Complainant claims that the band was actually together in 1999 – prior to the registration of in January 2001 – and that common law trademark rights were being acquired through use as early as 1999. This latter claim does not square with the claim of “first use” and “first use in commerce” in June 2001, which appears in Complainant’s USPTO trademark registrations. The Panel is left with the impression that Complainant is taking some liberty with the facts.
This suspicion is buttressed by the recent changes made by a member of the Complainant band to the band’s Wikipedia page, which scrubs all references to Respondent Ross and his role in the history of the band.
Finally, the Panel notes that the March 2014 Settlement Agreement makes no express reference to the Domain Names, or to domain names in general. A provision regarding intellectual property rights does not perforce encompass domain names; a domain name is not in itself an intellectual property right, as it can be used for many purposes unrelated to intellectual property. The Settlement Agreement also includes an integration clause, thus confirming that its terms constitute the entire agreement between the Parties. To the extent Complainant believes it has a viable breach of contract claim against Respondent, Complainant is free to pursue such a claim in a court of law.
Complainant has not established Policy paragraph 4(a)(iii). D. Reverse Domain Name Hijacking
Respondent makes a fairly strong argument that this Complaint should never have been brought, because at its core this is a dispute over contract terms. Respondent also points out some discrepancies, noted above, in Complainant’s alleged sequence of events. Finally, Respondent notes that Complainant has scrubbed the contents of the band’s Wikipedia page to distort the history of the band by omission of Respondent Ross (even though Complainant never put the Wikipedia page into the record). Despite these factors, the Panel concludes that this Complaint was misconceived rather than brought in bad faith, and hence the Panel declines to make a finding of reverse domain name hijacking in this case. 7. Decision
For the foregoing reasons, the Complaint is denied. Respondent’s request for a finding of reverse domain name hijacking is also denied.
Robert A. Badgley
Sole Panelist
Date: February 20, 2017
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