Complainant is Savoia NYC Incorporated, United States of America (“United States”), represented by Royer Cooper Cohen Braunfeld, LLC, United States.
Respondent is Parris Mayhew, United States, self-represented.
The disputed domain name <cro-mags.com> is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2021. On January 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2021. A Response was filed with the Center by a person claiming to be the Respondent, but from a different email address than confirmed by the Registrar as belonging to the registrant of the disputed domain name, on February 12, 2021. On February 19, 2021, the Center informed the Parties that it would proceed with panel appointment, pursuant to paragraph 6 of the Rules.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 25, 2021. 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.
In his Response, Respondent has provided substantial evidence, satisfactory to the Panel, that he is the owner of registration of the disputed domain name notwithstanding his use of an email address different than that on the record of registration. Moreover, the physical address for Respondent on the record of registration is the same address to which express courier delivery of the Complaint was completed, and that was signed for by Respondent. The Panel accepts the Response as a timely formal submission by Respondent.
Complainant is the owner of registrations for the word trademark CRO-MAGS on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 3,749,142, registration dated February 16, 2010, in international class (IC) 9, covering, inter alia, digital media, downloadable sound recordings, and phonograph records (by assignment from Harley Flanagan); registration number 5,967,804, registration dated January 21, 2020, in IC 41, covering, inter alia, live performances and entertainment services, as further specified; and, registration number 5,119,209, registration dated January 10, 2017, in IC 25, covering clothing of various types. Complainant owns additional registrations for the CRO-MAGS trademark at the European Union Intellectual Property Office, and through an international registration under the Madrid System. The latter registrations do not predate the earliest USPTO registration owned by Complainant.
The foregoing summary of trademark registrations currently held by Complainant does not represent the full history of registration by principals involved in this matter. Harley Flanagan, associated with Complainant, was registrant of a stylized CRO-MAGS service mark registration at the USPTO, registration number 1,750,517, registration dated February 2, 1993, in IC 41, covering entertainment services in the nature of a musical group. That registration was assigned effective July 13, 2000, to Flanagan/Mayhew, Inc. a corporate entity jointly owned by Complainant’s associated party, Harley Flanagan, and Respondent, Parris Mayhew. Said assignment was signed by Harley Flanagan, and duly recorded by the USPTO. This registration was canceled based on nonrenewal in November 2003. Complainant did not refer to this registration in its Complaint. The relevant information and documentation was furnished by Respondent.1
Complainant offers and sells goods and services bearing the CRO-MAGS trademark, including at live shows and through a website at “www.harleyflanagan.com”. Complainant also is registrant of the domain name <cromags.com>. The CRO-MAGS trademark identifies a musical group that began performing in the 1980s. Harley Flanagan (bass guitar and vocals), associated with Complainant, and Parris Mayhew (rhythm guitar), were members of that musical group at least through 2000, in which year the album “Revenge” was released. This CD booklet for the Revenge album lists Harry Flanagan as vocals and bass, Parris Mayhew as guitar, and identifies Parris Mayhew and Harley Flanagan as the songwriters, arrangers, and producers. The disputed domain name is prominently listed to identify the website of the band on the CD booklet.
There has been a “falling out” between the members of CRO-MAGS as the band was constituted as of 2000. Harry Flanagan and Parris Mayhew are pursuing separate interests.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. That verification indicates that the record of registration was created on February 3, 1999. There is nothing in the record of this proceeding to indicate that any party other than Respondent has owned the record of registration of the disputed domain name.
Respondent has used the disputed domain name in connection with a website that posts photographs of the CRO-MAGS band and its members, both from the years in which they were performing together, and from subsequent years in connection with media appearances of various types. The website includes an email dialogue discussing, among other things, the history of the band and the reasons for the falling out among its members. It is fair to say that some of the recollections posted by Respondent do not portray Mr. Flanagan in a favorable light, though that may well depend on the perspective of the reader.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges that it owns rights in the trademark CRO-MAGS and that the disputed domain name is identical or confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has never been commonly known by the disputed domain name, and; (2) Respondent is not making legitimate noncommercial or fair use of the disputed domain name, including because the disputed domain name is identical to Complainant’s established brand.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because : (1) Respondent registered and is using the disputed domain name to profit from and exploit Complainant’s CRO-MAGS trademark by misdirecting Internet users to Respondent’s website; (2) Respondent registered the disputed domain name knowing that it is identical to Complainant’s well-known trademark; (3) although Respondent may have been a member of the CRO-MAGS band “and had no bad faith intention in selecting and adopting the Domain Name, ICANN panels have consistently held that bad faith adoption can be applied retroactively…”. “Thus, it simply does not matter what Respondent’s state of mind was at the time he registered the Domain Name. To the contrary, what is dispositive is that despite leaving the Cro-Mags band many years [sic], Respondent is still seeking to trade on the goodwill of the CRO-MAGS Mark and the band, by among other things, offering the band’s CDs for sale and advertising as the ‘the official Cro-Mags Website’”, and; (4) there is no plausible circumstance under which Respondent’s current use of the disputed domain name is legitimately in good faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent contends that because the disputed domain name was registered on February 3, 1999, and Complainant came into existence only on March 7, 2008, that Complainant did not exist at the time of registration of the disputed domain name. Therefore it is impossible for Complainant to prove bad faith because it did not exist at the time of registration of the disputed domain name.
Respondent acknowledges that the disputed domain name is identical to the CRO-MAGS trademark that was registered by Complainant on January 21, 2020, but that registration of the disputed domain name predated that registration by approximately 21 years.
With respect to rights or legitimate interests, Respondent contends: (1) that he had legitimate interest in registering the disputed domain name well before he registered it on February 3, 1999, and that he registered the disputed domain name with the full knowledge, consent, and ratification of Harley Flanagan, assignor of the trademark to Complainant; (2) Mr. Flanagan registered a stylized CRO-MAGS trademark at the USPTO on February 2, 1993, and assigned that registration on July 13, 2000, to a corporation jointly formed on April 10, 1996, by Complainant and Respondent; (3) Respondent cofounded, was the principal songwriter and rhythm guitarist of the CRO-MAGS, referring among other things to his copyright in the demo sound recording of their debut album entitled “Age of Quarrel”; (4) Respondent is well known in the international rock community since the 1980s, and has used the website identified by the disputed domain name in part to defend his hard-earned artistic reputation; (5) Harry Flanagan recognized Respondent’s legitimate interests in the disputed domain name by assigning his full interests in the 1993 stylized trademark to their 50-50% owned corporate entity on July 13, 2000.
With respect to bad faith registration and use, Respondent argues that: (1) Complainant and Respondent as co-writers, rangers and producers of an album entitled “Revenge” released in early 2000, which included a reference to the disputed domain name on the CD booklet, demonstrates that Complainant was aware of and consented to registration by Respondent of the disputed domain name; (2) Complainant did not register its trademark until January 21, 2020, and did not even come into existence until March 7, 2008, a full nine years after registration of the disputed domain name; (3) Mr. Flanagan’s July 13, 2000 transfer of the stylized CRO-MAGS trademark to the jointly owned Flanagan/Mayhew, Inc. clearly recognized Respondent’s right to use the name of the band in the disputed domain name; (4) WIPO jurisprudence clearly establishes that because the disputed domain name was registered before Complainant acquired trademark rights, only in exceptional cases would Complainant be able to establish bad faith, and there are no exceptional circumstances in this case; (5) Complainant’s theory of retroactive bad faith fails as the limited precedent cited by Complainant are not relevant to the facts in this proceeding; (5) Complainant must have been aware when it filed its Complaint that it could not succeed against Respondent because Respondent’s registration of the disputed domain name was undertaken with the knowledge and consent of Complainant, and took place well before Complainant’s acquisition of rights in the CRO-MAGS trademark.
Respondent requests the Panel to make a finding of reverse domain name hijacking (RDNH) against Complainant because Complainant did not come into existence until eight years after the trademark registration at issue here, and because Respondent was in business with Complainant’s principal, Harley Flanagan, at the time of registration of the disputed domain name. By failing to mention the 1993 trademark that Mr. Flanagan co-owned with Respondent as of July 13, 2000, Complainant provided intentionally incomplete evidence. It is a striking omission that warrants a finding of RDNH on its own.
Respondent requests the Panel to reject the Complaint.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical address provided in its record of registration. Respondent timely filed a Response, confirming that notice was received. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of rights in the trademark CRO-MAGS as evidenced by registration at the USPTO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights in the trademark, albeit differing as to the timeline regarding when those rights may have arisen and referring to a prior period of joint ownership through a corporate entity. The Panel determines that Complainant has rights in the trademark CRO-MAGS.
The disputed domain name directly and fully incorporates Complainant’s CRO-MAGS trademark. It is identical to that trademark from the standpoint of the Policy.
The Panel determines that Complainant has rights in the trademark CRO-MAGS, and that the disputed domain name is identical to that trademark.
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c)”.
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has provided substantial evidence that at the time of registration of the disputed domain name (February 3, 1999) he was an active member of the musical group using the name and trademark
CRO-MAGS and that, approximately one year following Respondent’s registration of the disputed domain name (July 13, 2000), Complainant’s trademark assignor, Harry Flanagan, conveyed his rights in that trademark to a corporate entity equally owned by Respondent and Mr. Flanagan. In addition, Mr. Flanagan and Respondent in 2000 released a CD album (“Revenge”) that prominently included the disputed domain name as identifier of the musical group’s website, and listed Harry Flanagan and Respondent as writers, arrangers, and producers of the album.
The foregoing is strong evidence supporting Respondent’s assertion that he registered the disputed domain name with the knowledge and consent of Harry Flanagan, assignor of trademark rights to Complainant. Clearly being aware of Respondent’s registration of the disputed domain name (since it appeared on the Revenge CD booklet), Harry Flanagan transferred his trademark rights to Respondent as 50% co-owner of the Flanagan/Mayhew, Inc. business entity. Moreover, Respondent at the time of registering the disputed domain name was known through his membership in the CRO-MAGS band by the disputed domain name, whether or not he had individually acquired rights in the CRO-MAGS trademark.
Respondent has rights or legitimate interests in the disputed domain name based on his former membership in the musical group to which the CRO-MAGS trademark refers in combination with the trademark assignor’s certain knowledge that Respondent had registered the disputed domain name, followed by the assignor’s transfer of trademark rights to Respondent (as business co-owner).
The Panel determines that Complainant has failed to establish that Respondent lacks has rights or legitimate interests in the disputed domain name. Put another way, the Panel determines that Respondent has rights or legitimate interests in the disputed domain name.
While the Complaint fails because of this determination regarding rights or legitimate interests, the Panel will address the issue of bad faith, inter alia, as the issue of RDNH has been raised by Respondent.
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include that “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
Complainant has argued that Respondent registered and is using the disputed domain name intentionally for commercial gain to attract Internet users to his website by creating a likelihood of confusion with Complainant as the source, sponsor, affiliate or endorser of Respondent’s website.
Respondent has pointed out that Harry Flanagan initially registered a stylized CRO-MAGS trademark in 1993, although that trademark registration was canceled in 2003, after being assigned to Flanagan/Mayhew, Inc. in 2000.
Complainant failed to make reference to this early registration and transfer, which is perplexing at the least. A rudimentary search of USPTO records regarding the CRO-MAGS trademark would have disclosed that early registration, as well as the assignment and subsequent cancellation. Arguably, Complainant’s position regarding bad faith is strengthened because there was a registered trademark owned by Harry Flanagan for CRO-MAGS on the records at the USPTO in 1999 when Respondent registered the disputed domain name. At least in principle Respondent might have acted in bad faith in relation to the trademark since it existed in terms of USPTO registration when Respondent registered the disputed domain name. The Panel need not address whether there was some subsequent lapse in registrations that might have left only common law or unregistered trademark rights for some time - and which party would have owned those unregistered trademark rights - since this does not affect the outcome of this proceeding.
The key point for present purposes is that when Respondent registered the disputed domain name in 1999, and assuming (for the sake of argument) that Harry Flanagan alone owned the trademark rights for CRO‑MAGS in 1999, there is no indication on the record of this proceeding that Respondent acted intentionally to create a likelihood of confusion as to the source or sponsorship of the CRO-MAGS website. Because the 2000 Revenge CD album booklet materials prominently refer to the <cro-mags.com> domain name, the disputed domain name was not registered by Respondent to create a likelihood of confusion. It was registered to identify the website of the musical group identified by the disputed domain name and trademark. Complainant’s assignor ratified that course of conduct through his transfer in 2000 of the trademark to the business entity jointly owned by Harry Flanagan and Respondent.
Complainant’s argument regarding retroactive imputation to Respondent of bad intent in 1999 based on his use of the disputed domain name today is entirely off the mark. While there are cases under the Policy in which subsequent conduct, such as offering a domain name for sale, may provide evidence of intent at the time of registration, those cases are far from relevant to the circumstances here. There is literally no evidence in this proceeding that Respondent registered the disputed domain name with the idea that more than 20 years later he could be using it to divert Internet users away from the band which it identifies.
The Panel determines that Complainant has failed to demonstrate that Respondent registered and is using the disputed domain name in bad faith.
Reverse Domain Name Hijacking
Respondent has requested the Panel to make a finding of Reverse Domain Name Hijacking against Complainant.
The Rules provide:
Rule “1. Definitions
In these Rules:
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Rule “15. Panel Decisions
If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Complainant failed to provide the Panel with material evidence relevant to its Complaint and this proceeding, and in particular evidence of the business dealings between Harry Flanagan and Parris Mayhew involving the CRO-MAGs trademark that demonstrate a period of co-ownership of trademark rights substantially contemporaneous with the date of Respondent’s registration of the disputed domain name.
In addition, Complainant based its case on a jurisprudentially far-fetched theory that somehow Respondent’s use of the disputed domain name in 2021 in connection with a website posting materials regarding a band of which he was a member could establish his bad faith intent in registering the disputed domain name in 1999. Two cases cited by Complainant to support its position did not speak to this question.
The Panel finds it difficult to believe that Complainant and its counsel thought they could succeed in this proceeding if Respondent responded. Respondent did respond. While Complainant’s lapse in providing evidence in theory might have resulted from lack of awareness of underlying facts, those facts should have been readily apparent from adequate preparation and investigation. In addition, there is no apparent excuse for proposing a legal theory that is unsupported by UDRP precedent.
The Panel determines that Complainant and its counsel have engaged in RDNH by initiating this proceeding in bad faith and seeking to acquire the disputed domain name without adequate regard to the facts or law.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: March 11, 2021
1 In verifying the information provided by Respondent on the USPTO TESS database, the Panel identified two additional similar canceled registrations owned by Flanagan/Mayhew, Inc. for the CRO-MAGS trademark, registration number 2,500,183, registration dated October 23, 2001, and; registration number 2,509,485, registration dated November 20, 2001.
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