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March 7, 2017 / Nate Harris

Band derailed in bid to recover domains from its former manager

Summary of Railroad Earth, LLC v. Brian Ross and Ross Artist Management, Inc.

(WIPO Case No. D2017-0039)

Filed: January 10, 2017; Decided: February 20, 2017 (Panelist: Robert A. Badgley)

Disputed domain names: <railroadearth.com> and <railroadearth.net>

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railroadearth.com

Summary

A band’s then-manager registered domain names that incorporate the band’s name; the parties dispute whether the manager or the band owned or used the name first. The Panel finds the complainant band’s version of events unbelievable, noting that the band has offered different first use dates at different times, and declines to find bad faith registration or use of the domain names.

The Parties

Complainant Railroad Earth is a jam band from New Jersey. The band released its first album in 2001. The Panel notes that “[a]ccording to the Complaint, the band Railroad Earth is ‘famous.'” (Ed: I was in a “famous” band once, too.)

The Respondent Brian Ross is the band’s former manager. After a dispute arose between Mr. Ross and the band, a settlement agreement in 2014 called for the band to pay Mr. Ross as compensation for, among other things, “any of [the band’s] rights and title and interests in and to its intellectual property, copyrights, trademarks, or otherwise[.]” The band claims that this 2014 agreement covers the disputed domain names, which were registered in 2001 (railroadearth.com) and 2004 (railroadearth.net).

The band claims that its members began working together as early as 1999, and began playing publicly in 2001. Its federal trademark registrations for the mark RAILROAD EARTH recite a first use date of June 2001. According to the band, they instructed Mr. Ross to register the disputed domain names.

According to Mr. Ross, however, he registered the <railroadearth.com> domain in January 2001, before the band’s existence, then invited the band members to form a band called Railroad Earth. He claims to have used the “Railroad Earth” name with another musical project whose song is credited in a 2000 film titled Big Eden.

The band in 2015 asked Mr. Ross to transfer to it the domain names; they claim he requested another $15,000 to do so. Mr. Ross claims that a band member recently edited the group’s Wikipedia entry to remove all references to Mr. Ross.

Identical or Confusingly Similar

The Panel finds that the band’s use and registration of the RAILROAD EARTH mark gives it rights in the mark, which is identical to the domains in dispute.

Rights or Legitimate Interests

The Panel declines to address this prong in view of its “bad faith” findings discussed below.

Registered and Used in Bad Faith

The Panel is “dubious” about the band’s version of events. It notes that the band claims, in its complaint, to have formed in 1999, and that it acquired its common law trademark rights as early as 1999. According to the Panel, this claim “does not square” with the band’s trademark registrations, which claim a first use in commerce of June 2001. The Panel concludes that the band “is taking some liberty with the facts,” a conclusion it believes is supported by the recent edits to the band’s Wikipedia page. By contrast, Mr. Ross produced evidence that he used the RAILROAD EARTH mark and registered the <railroadearth.net> domain name before the band even formed.

The Panel also notes that the 2014 agreement references “intellectual property,” but not the domain names specifically; it observes that “a domain name is not in itself an intellectual property right, as it can be used for many purposes unrelated to intellectual property.”

For these reasons, the Panel finds that the band has failed to establish that the domain was registered and used in bad faith.

Reverse Domain Name Hijacking

Mr. Ross argued for a finding of reverse domain name hijacking, asserting that a UDRP action should never have been brought for what is essentially a contract dispute. He also argued, as discussed above, that the band’s timeline is incorrect, and points out the changes to the band’s Wikipedia page.

Nonetheless, the Panel finds that the complaint was “misconceived rather than brought in bad faith, ” and declines to make a finding of reverse domain name hijacking.

Decision

Both the Complaint, and the request for a finding of reverse domain name hijacking, are denied.

Commentary

Let’s look at the two factors that led the Panel to conclude that the band was “taking some liberty with the facts.”

First, there is the supposed contradiction between the complaint, which alleges a first use date of the RAILROAD EARTH mark “as early as 1999,” and the date of first use cited in the band’s trademark registrations. There actually is no contradiction. Like every other trademark applicant, when the band filed its trademark applications in 2014, it alleged a date of first use in commerce “at least as early as 2001″–meaning it could have been earlier:

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Excerpt of U.S. Appl. No. 86/412,395 (RAILROAD EARTH)

Trademark attorneys are often conservative about listing a first use date. In a case like this, where the applications were filed after the band had been around for roughly 15 years, there may not have been a reason to think that there was a huge difference between listing 2001 or 1999. Once the band was involved in the dispute with its manager, it may have investigated further and felt comfortable asserting the earlier date. It’s a leap to say from these different dates that the band was “taking some liberty with the facts.”

Second, putting a lot of weight on the edits to the Wikipedia page overlook the fact that, well, it’s Wikipedia. For one thing, the Panel doesn’t identify the evidence showing that it was a band member who made the edits. For another, the November 2016 iteration of the page admittedly says that Mr. Ross “brought together” the group, and suggests that he steered the band through many major career moves. But from July 2010 through February 2014–i.e., before the band’s dispute with Mr. Ross–the Wikipedia page mentioned Mr. Ross only to indicate that the band “brought [him] on board” after recording a demo under the band name. Before July 2010, he doesn’t appear to be mentioned at all on the Wikipedia page.

While the most recent edit could be seen as the band attempting to rewrite history to cut out Mr. Ross, it’s equally plausible that Mr. Ross (or his surrogates) edited the Wikipedia page in 2014 to inflate his role during the dispute with the band, and that the band recently corrected the inaccuracies. Whatever actually happened, there’s not enough evidence cited in the decision to conclude that the band is “taking some liberty with the facts.”

On the other hand, current and earlier versions of the Wikipedia page mention that the band members “came together in 2001.” But the Panel doesn’t rely on that (somewhat vague) statement to counter the band’s 1999 first use date.

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