The Complainant Railroad Earth LLC, (an American “jam band” which has been touring and recording music for more than 15 years) filed a Complaint with the World Intellectual Property Organisation (WIPO) under the ICANN Universal Dispute Resolution Procedure (UDRP) against their former manager, Mr Ross seeking recovery of the domain name railroadearth.com.
Mr Ross and the band entered into a “Mutual Release and Settlement Agreement” which contains an “integration” or “entire agreement” clause, under which the band agreed to pay certain payments to Mr Ross, and Mr Ross 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…”
Mr Ross had registered the domain name <railroadearth.com> on 23 January 2001, and the domain name <railroadearth.net> on 16 March 2004. The Parties differed in significant respects as to the formation of the band and the registration of the domain names. According to Complainant, the band hired Mr Ross as its manager and instructed him to register the domain names on behalf of the band. In the Complaint, they alleged that the band “was formed and first began performing in 2001 in Stillwater, New Jersey” and 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 a reply to Mr Ross’s version of events they said the band members formed a limited liability company (LLC) in 2001 and that the members’ “[c]ommon law trade mark rights were established in 1999 and later transferred to the LLC.” They hold several United States Trade Mark Registrations for the mark RAILROAD EARTH. These marks were registered on 19 May 2015, and they show a first use in commerce of June 2001.
By contrast, Mr Ross contended that he formed the band. According to his Response when he actually registered <railroadearth.com> in January 2001, the band Railroad Earth had not yet been formed and had no members. He formed the band Railroad Earth only after registering <railroadearth.com> by inviting select musicians individually for the sole purpose of forming the band Railroad Earth. He also said 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, the Respondent annexed 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, (presumably following the “Mutual Release and Settlement Agreement”) the band asked Mr Ross to transfer the domain names, but apparently he would not agree to do so without the payment of an additional $15,000 USD.
Mr Ross disputing the band’s alleged sequence of events, argued that this is in essence a contract dispute rather than a clear case of cybersquatting amenable to resolution under the UDRP. Moreover, he asked for a finding of “reverse domain name hijacking” against the band, on the basis that they had given a false account of the Parties’ relationship, and because a member of the band– during the course of the proceeding – altered the content of the band’s Wikipedia page to delete all references to Mr Ross in the band’s history.
The Panel could not conclude that the Complainant had satisfied its burden of proving that the domain names were registered and used in bad faith. According to the Complainant, the Respondent Mr Ross had been hired as its band manager and was then instructed to register the domain names on behalf of the band. The Respondent Mr Ross flatly denied this alleged sequence of events, and produced 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 band was even formed.
The Panel was also dubious about the Complainant’s alleged timeline. The Complainant had claimed that the band was actually together in 1999 – prior to the registration of <railroadearth.com> in January 2001 – and that common law trade mark rights were being acquired through use as early as 1999. However, this claim did not square with the claim of “first use” and “first use in commerce” in June 2001, which appears in their US trade mark registrations. The Panel was left with the impression that the Complainant was “taking some liberty with the facts”.
This suspicion was buttressed by the recent changes made by a member of the Complainant band to the band’s Wikipedia page, which scrubs all references to the Respondent Mr Ross and his role in the history of the band.
Finally, the Panel noted that the March 2014 Settlement Agreement made no express reference to the domain names, or to domain names in general. The Panel thought the provision regarding intellectual property rights “did 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 included an integration clause, thus confirming that its terms constituted the entire agreement between the Parties. To the extent the Complainant believed it has a viable breach of contract claim against Mr Ross, they were free to pursue such a claim in a court of law.
On the subject of “Reverse Domain Name Hijacking” Mr Ross had made a fairly strong argument that the Complaint should never have been brought, because at its core it was a dispute over contract terms. He also pointed out some discrepancies, discussed above, in Complainant’s alleged sequence of events. Despite these factors, the Panel concluded that this Complaint was “misconceived rather than brought in bad faith”, and therefore declined to make a finding of reverse domain name hijacking.
This case highlights at least two things. Make sure that all issues (not least those relating to domain names) are adequately covered in any agreement or contract. Secondly, a UDRP Complaint is not a panacea for all perceived wrongs relating to a domain name. Sometimes, the appropriate course to consider is properly structured legal proceedings not a possibly misconceived UDRP complaint.
Eric Ramage is a Fellow of The Chartered Institute of Trade Mark Attorneys, and has a Higher Courts Litigation Certificate from the Intellectual Property Regulation Board. He has substantial experience of internet issues dating back to 1999 when he was invited to serve on the Policy Advisory Board of the UK domain name registry Nominet, of which he was Chair between 2006 and 2010. He routinely lectures on domain name recovery.
Edwin Coe LLP is a Limited Liability Partnership, registered in England & Wales (No.OC326366). The Firm is authorised and regulated by the Solicitors Regulation Authority. A list of members of the LLP is available for inspection at our registered office address: 2 Stone Buildings, Lincoln’s Inn, London, WC2A 3TH. “Partner” denotes a member of the LLP or an employee or consultant with the equivalent standing.