national arbitration forum

 

DECISION

 

Jordan Cook p/k/a Reignwolf v. Ryan Crase, Ryan Crase Creative Media

Claim Number: FA1309001520515

PARTIES

Complainant is Jordan Cook p/k/a Reignwolf (“Complainant”), California, USA.  Respondent is Ryan Crase, Ryan Crase Creative Media (“Respondent”), represented by Tiffany L. Grau of Gray Law, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <reignwolf.com> and <reignwolfmusic.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Hon. Nelson A Diaz (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2013; the National Arbitration Forum received payment on September 19, 2013.

 

On September 20, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <reignwolf.com> and <reignwolfmusic.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@reignwolf.com, postmaster@reignwolfmusic.com.  Also on September 24, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on October 15, 2013.

 

On October 22, 2013, Complainant’s Additional Submission was received  and found to be compliant.

 

On October 28, 2013 the Panel received and examined the Declaration of Brandon Mack.

 

On October 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A Diaz (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant goes by the REIGNWOLF mark in his business of performing music. Complainant has used the trademark since 2011, and has registered the mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,395,052 filed September 21, 2012; registered September 3, 2013).

 

Complainant alleges that he has used the mark since 2011 as a stage name used in the performance of music.  Complainant has used REIGNWOLF in his performances at Coachella, South by Southwest (“SXSW”), Austin City Limits, and Lollapalooza, all of which are prominent music festivals in the United States. Complainant has made performances at fee-generating concerts for various musicians such as Edward Sharpe, The Pixies, Band of Horses, Soundgarden, The Magnetic Zeros, and Pearl Jam. 

 

Respondent’s <reignwolf.com> and <reignwolfmusic.com> domain names both primarily contain the REIGNWOLF mark. 

 

Respondent is not known by these domain names, as Complainant is the only REIGNWOLF. 

 

Complainant paid Respondent to provide promotional services for Complainant and his REIGNWOLF mark. Respondent registered the <reignwolf.com> and <reignwolfmusic.com> domain names to promote REIGNWOLF, with <reignwolfmusic.com> merely resolving to the <reignwolf.com> domain name. Respondent now uses the domain names to promote Respondent’s own, independent, video production services.

 

Respondent listed the <reignwolf.com> domain name for sale for $50,000.00. Respondent has placed the <reignwolf.com> domain name for sale for $50,000.00. See Amended Complaint, at Attached Ex. R. 

 

Respondent is holding both of the <reignwolf.com> and <reignwolfmusic.com> domain names to hinder Complainant’s ability to register domain names containing the REIGNWOLF mark.  Respondent placed an option for prospective event-hosters to contact Respondent through the <reignwolf.com> and <reignwolfmusic.com> domain names so as to book Complainant for a performance. However, Complainant will never see any of these requests and thus his business of performing music has been disrupted as Complainant will never know who desires to hire him. 

 

Respondent makes the false impression that Complainant is still affiliated with Respondent’s new projects. The domain names’ resolving website has a tab allowing Internet users to contact Complainant to hire him to perform, yet these offers will go to Respondent and not Complainant. When Complainant was forced to register <reignwolfofficial.com> to have a presence on the Internet, Respondent responded by altering the headline of the domain names’ resolving website to say “REIGNWOLF OFFICIAL.”

 

B. Respondent

 

When the <reignwolf.com> domain name was first registered, Respondent was not known by the REIGNWOLF name yet. While the <reignwolf.com> domain name was registered in November 2011, Complainant performed as “Jordan Cook”—his legal name—at a December 3, 2011, concert. See Response, at Attached Exs. A–B. 

 

Respondent started managing Complainant’s musical career in November 2011. Respondent created the REIGNWOLF name and registered a domain name incorporating the name—<reignwolf.com>—on November 30, 2011. Respondent  helped Complainant meet with an attorney in Seattle, Washington circa September 2012 to register the REIGNWOLF mark as a federally protected trademark. Respondent entered into an agreement wherein Complainant would be the listed owner of the REIGNWOLF mark, whereas Respondent would retain control of the <reignwolf.com> domain name until such a time that Complainant elected to buy the domain name from him.  The <reignwolfmusic.com> domain name was registered by Respondent on October 24, 2012, to increase web traffic and spur interest in REIGNWOLF in the music community. Respondent thus has rights and legitimate interests in these domain names, and is only using them to host the copyrighted materials that Respondent has from his time working with Complainant. 

 

While Complainant had the option to purchase these domain names, he was not forced to do so. 

 

Respondent could not have registered the <reignwolf.com> domain name in bad faith when there is no evidence that Complainant had used this mark prior to the domain name’s registration. Complainant was not performing as REIGNWOLF on or before the registration of the <reignwolf.com> domain name. 

 

Respondent registered the <reignwolfmusic.com> domain name to help cultivate Complainant’s music career, and thus could not be construed to have been registered in bad faith. 

 

In an informal e-mail received prior to the submission of the Response, Respondent indicated that he believed he held legal rights to this name as he came up with the name and term REIGNWOLF in his capacity as a manager of talent. Respondent allowed Complainant to use the name as his trademark in performing music, but the parties did agree that Respondent would control and operate the <reignwolf.com> domain name until, or if, Complainant ever decided to compensate Respondent for the domain name.

 

C. Additional Submissions

 

Respondent continuously changes his story as to the extent to which he assisted Complainant, and the extent to which Respondent registered the disputed domain name. Respondent has used the domain name to host critical and disparaging content, along with Respondent’s own self-promoting materials. Despite having no right to do so, Respondent maintained these domain name registrations following his falling out with Complainant.

 

Respondent hosts pirated and/or unlicensed content through these domain names. 

 

Although Complainant did not have reason to believe that Respondent registered the domain name initially in bad faith, Respondent’s actions following his termination from Complainant illustrate bad faith. Respondent is using the domain names to gain leverage over Complainant, as Respondent seeks to solicit these domain names back to Complainant.

 

The Declaration of Brandon Mack further supports the evidence and allegations of the Complainant and must be given due consideration and veracity since the declarant is an independent party witness.

 

FINDINGS

ICANN Policy ¶ 4(a)(i), Policy ¶ 4(a)(ii), Policy ¶ 4(a)(iii), ¶ 4(b)(i),  have been violated by Respondent.

 

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."

 

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

 

Complainant states that he goes by the name of the REIGNWOLF mark in his business of performing music. Complainant claims that he has used the trademark since 2011, and has registered the mark with the USPTO (Reg. No. 4,395,052 filed September 21, 2012; registered September 3, 2013). Previous panels have found that USPTO registrations date the applicant’s rights back to the date of filing. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel agrees that Complainant’s USPTO registration for the REIGNWOLF mark dates its rights in that mark back to the September 21, 2012, filing date of the trademark application. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). 

 

Complainant also alleges that he has used the mark since 2011 as a stage name used in the performance of music.  Complainant states that he has used REIGNWOLF in his performances at Coachella, SXSW, Austin City Limits, and Lollapalooza, all of which are prominent music festivals in the United States. Complainant has made performances at fee-generating concerts for various musicians such as Edward Sharpe, The Pixies, Band of Horses, Soundgarden, The Magnetic Zeros, and Pearl Jam. The Panel notes that Complainant does not provide much evidence as to usage of the REIGNWOLF mark in 2011, and indeed Respondent provides evidence that as late as December 3, 2011, Complainant used his actual name (Jordan Cook) to perform at the KEXP “Audioasis” event. See Response, at Attached Ex. B. However, the Panel further notes that in this same exhibit (Respondent’s Ex. B), Complainant is headlined as “Reignwolf” in a section that promotes and explains Complainant’s musical style, and personal origins, to interested consumers. See id at 2. Furthermore, Respondent’s Declaration in support of its Response states that “[o]n or about, December 2, 2011, I presented [Complainant] with the idea of using “Reignwolf” as his stage name. He agreed.” See Response, Decl. of Crase ¶ 5 (Attached as Ex. C). The Panel therefore agrees that as early as December 3, 2011, Complainant was clearly performing music under, and making actual use of, the REIGNWOLF name. Thus the Panel agrees that Complainant gave the REIGNWOLF mark secondary meaning so as to establish rights in the REIGNWOLF mark as far back as December 3, 2011, as this was the earliest evidenced time that Complainant was billed as, and performed under, the name REIGNWOLF. See, e.g., AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).

 

Complainant argues that Respondent’s <reignwolf.com> and <reignwolfmusic.com> domain names both primarily contain the REIGNWOLF mark. The Panel notes that both domain names include the generic top-level domain (“gTLD”) “.com,” and the <reignwolfmusic.com> domain name adds the term “music” to Complainant’s mark. The Panel agrees that the <reignwolf.com> domain name is clearly identical to the REIGNWOLF mark under Policy ¶ 4(a)(i). See, e.g., Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). The Panel also agrees that the addition to the term “music” to a mark such as REIGNWOLF—a mark used to promote a musician—does nothing to stymie confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel therefore agrees that the <reignwolfmusic.com> domain name is confusingly similar to the REIGNWOLF mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The Panel must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). 

 

Complainant claims that Respondent is not known by these domain names, as Complainant is the only REIGNWOLF. The Panel agrees that both the WHOIS information, and Respondent’s own contentions, indicate that Respondent is “Ryan Crase.” In St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel declined to make findings under Policy ¶ 4(c)(ii) when the respondent did not make any claim that it was actually known by the domain names. The Panel agrees that there is no evidence that Respondent is known by the <reignwolf.com> and <reignwolfmusic.com> domain names under Policy ¶ 4(c)(ii).

 

Complainant states that he paid Respondent to provide promotional services for Complainant and his REIGNWOLF mark. Complainant explains that Respondent registered the <reignwolf.com> and <reignwolfmusic.com> domain names to promote REIGNWOLF, with <reignwolfmusic.com> merely resolving to the <reignwolf.com> domain name. Complainant claims that Respondent now uses the domain names to promote Respondent’s own, independent, video production services. The Panel notes that the parties agree that both domain names ultimately resolve to the <reignwolf.com> domain name’s landing page. The Panel further notes that the evidence in the record shows that the domain names’ are being used to host a website that contains the masthead “RYAN CRASE producer / director / visual artist” along with a video of Complainant performing under the REIGNWOLF mark, and other content. See Amended Complaint, at Attached Ex. L; Response, at Attached Ex. H. The panel in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), found that there was nothing bona fide or legitimately noncommercial about using confusingly similar domain names to self-promote the respondent’s own business or personal endeavors. Thus the Panel finds that Respondent has failed to make a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Complainant next points out that Respondent listed the <reignwolf.com> domain name for sale for $50,000.00. The Panel notes evidence indicating that the <reignwolf.com> domain name has been placed on the Aftermarket.com auction website for $50,000.00; with a Sedo.com bid list putting this domain name at a $10,000.00 listing price. See Amended Complaint, at Attached Exs. R–S. The panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), found that by placing the disputed domain name up for a public sale, the respondent had created evidence suggesting that it did not truly have Policy ¶ 4(a)(ii) rights or legitimate interests in the domain name. The Panel finds that Respondent’s willingness to promote the domain name through at least two domain name vendors is evidence that Respondent fail to have Policy ¶ 4(a)(ii) rights or legitimate interests in the <reignwolf.com> domain name.

 

Complainant further argues in his Additional Submission that the content posted on Respondent’s websites may be copyrighted by a record company. Complainant notes that he has received warnings from the rightful owners of web content in the past for content posted by Respondent. See Complainant’s Additional Submission, at Attached Decl. of Cook ¶ 9; Id. at Attached Exs. O, R. Previous panels have found that the use of disputed domain names to engage in unlawful activity is not a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, of a disputed domain name. See, e.g., Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel finds that Respondent’s unlicensed and unauthorized hosting of copyright-protected video content is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or is such a use legitimate or fair under Policy ¶ 4(c)(iii). 

 

Complainant claims in his Additional Submission that Respondent continuously changes his story as to the extent to which he assisted Complainant, and the extent to which Respondent registered the disputed domain name within his rights. See Complainant’s Additional Submission, at Attached Decl. of Cook ¶ 4. Complainant claims that Respondent has used the domain name to host critical and disparaging content, along with Respondent’s own self-promoting materials. Complainant argues that, despite having no right to do so, Respondent maintained these domain name registrations following his falling out with Complainant. Complainant explains that Respondent has no unique interest in the term “reignwolf” as the name came about when Complainant told Respondent that his favorite musician was “Howling Wolf,” and the “reignwolf” name came as a result of a GoDaddy.com, LLC domain name search for a relevant domain name. In the case of Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000), the panel agreed that whatever right or interest the respondent had in maintaining the domain name for the benefit of an employer, that interest disappeared once the respondent was no longer employed by the complainant. The Panel finds that Respondent’s continuous control of both the <reignwolf.com> and <reignwolfmusic.com> domain names following the end of his employment with Complainant illustrates a lack of Policy ¶ 4(a)(ii) rights and legitimate interests in the domain name.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s bad faith can be traced to the fact that Respondent has placed the <reignwolf.com> domain name for sale for $50,000.00. See Amended Complaint, at Attached Ex. R. The panel in George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), found that bad faith can be inferred when a distinctive domain name is placed for public auction for an amount that vastly exceeds any out-of-pocket expenses the respondent incurred in maintaining the domain name. The Panel finds that by placing the <reignwolf.com> domain name for sale for $50,000.00, Respondent has acted in Policy ¶ 4(b)(i) bad faith. 

 

Complainant next argues that Respondent is holding both of the <reignwolf.com> and <reignwolfmusic.com> domain names to hinder Complainant’s ability to register domain names containing the REIGNWOLF mark. Previous panels have found bad faith under Policy ¶ 4(b)(ii) when a single respondent registers more than one domain name that embed a complainant’s trademark. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). The Panel finds that as Respondent registered both the <reignwolf.com> and <reignwolfmusic.com> domain names, both of which include the REIGNWOLF mark, there is insufficient evidence to suggest Policy ¶ 4(b)(ii) bad faith. 

 

Complainant also alleges that Respondent placed an option for prospective event hosters to contact Respondent through the <reignwolf.com> and <reignwolfmusic.com> domain names so as to book Complainant for a performance. However, Complainant notes that he will never see any of these requests and thus his business of performing music has been disrupted as Complainant will never know who desires to hire him. The Panel finds that the evidence in the record does not clearly show the scope to which Respondent seeks to convince prospective venues to provide Respondent with their information. See Amended Complaint, at Attached Ex. L. IThe Panel does believe that Respondent is using the domain names to prevent prospective employers from contacting Complainant, and as such the Panel agrees that such a use infers a Policy ¶ 4(b)(iii) bad faith attempt to unfairly disrupt Complainant’s business. See, e.g., Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). 

 

Complainant avers that Respondent makes the false impression that Complainant is still affiliated with Respondent’s new projects. Complainant argues that he domain names’ resolving website has a tab allowing Internet users to contact Complainant to hire him to perform, yet these offers will go to Respondent and not Complainant. See Amended Complaint, at Attached Ex. L. Complainant explains that when Complainant was forced to register <reignwolfofficial.com> to have a presence on the Internet, Respondent responded by altering the headline of the domain names’ resolving website to say “REIGNWOLF OFFICIAL.” The Panel finds that Respondent’s actions indicate intent to confuse Internet users who visit the landing page of the <reignwolf.com> and <reignwolfmusic.com> domain names into believing that Complainant is indeed affiliated with, or the operator of, the domain names and their underlying content. As such, the Panel finds that Respondent’s actions amount to a Policy ¶ 4(b)(iv) bad faith attempt to profit off of the confusion of Internet users who visit these domain names’ websites. See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). 

 

Although Complainant did not have reason to believe that Respondent registered the domain name initially in bad faith, Respondent’s actions following his termination from Complainant illustrate bad faith. Respondent is using the domain names to gain leverage over Complainant, as Respondent seeks to solicit these domain names back to Complainant. The panel in Anbex Inc. v. WEB-Comm Techs. Group, FA 780236 (Nat. Arb. Forum Sept. 19, 2006), determined that Policy ¶ 4(a)(iii) bad faith can be inferred when a domain name is registered in a respondent’s capacity as an employee, but is then later used by the respondent to take advantage of its former employer. The Panel finds that the facts indicate that Respondent was merely acting for Complainant in registering the <reignwolf.com> and <reignwolfmusic.com> domain names, and as such Respondent’s continued registration of these domain names after the end of the parties professional relationship illustrates Policy ¶ 4(a)(iii) bad faith.

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <reignwolf.com> and <reignwolfmusic.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Nelson A Diaz (ret.), Panelist

Dated:  October 28, 2013

 

 

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