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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rashman Corporation v. Brent Furlong

Case No. D2006-0206

 

1. The Parties

The Complainant is Rashman Corporation, Northridge, California, United States of America, represented by Blakely, Sokoloff, Taylor & Zafman, LLP, United States of America.

The Respondent is Brent Furlong, Alpharetta, Georgia, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <mcflyusa.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2006. On February 16, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 17, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the domain name is registered with GoDaddy.com, but stating that the Respondent Brent Furlong of Alpharetta, Georgia, United States of America was the current registrant, rather than the respondent initially named in the Complaint, Domains By Proxy.com. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 7, 2006, revising the name of the Respondent to reflect the name and contact details of Brent Furlong as Respondent. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2006. The Respondent did not submit a timely response. Accordingly, the Center notified the Respondent’s default on March 29, 2006.

On March 29, 2006, the Center received an email from Nancy Furlong at Mighty McFly, Inc. indicating that she had received the Notification of Complaint and the Commencement of Administrative Proceedings on March 8, 2006, but had calculated the response deadline as March 29, 2006, rather than March 28, 2006. On March 29, 2006, Ms. Furlong sent a further email to the Center stating that she had not received the Notification of Complaint and Commencement of Proceeding via overnight courier until March 28, 2006. Ms. Furlong submitted an email response to the Complaint on March 29, 2006, and the Panel has considered that response.

The Center appointed Lynda Zadra-Symes as the sole panelist in this matter on April 7, 2006. 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.

 

4. Factual Background

Complainant contends that it is a well-known musical group throughout the world and that it has been using the trademark MCFLY in connection with recorded media featuring music and entertainment services over the last few years. Complainant is the owner of a European Community trademark registration, three UK trademark registrations, and a recently allowed U.S. application for registration for the mark MCFLY for use in connection with entertainment services.

The Complainant is the owner of the domain names < mcflyofficial.com>, < mcflyband.com>, < mcflyrocks.com>, and others.

Respondent appears to be a member of a musical group originally named MCFLY which, according to Complainant and statements on Respondent’s website, changed its name to MIGHTY MCFLY to resolve a dispute with complainant over use of the mark MCFLY.

Complainant contends that Respondent entered into a coexistence agreement with Complainant on November 9, 2004, evidencing the Respondent’s agreement to change its name and mark from MCFLY to MIGHTY MCFLY and that Complainant paid Respondent $10,000 as full compensation of any costs the Respondent may have or may in the future incur in connection with the change of its brand and business name from MCFLY to MIGHTY MCFLY.

The November 9, 2004, coexistence agreement submitted with the Complaint is between Complainant and a party named Genterine, Inc., a Georgia corporation. The person signing the agreement on behalf of Genterine, Inc. was named Wade Summerlin. There is nothing in the Complaint or the exhibits explaining the relationship between Respondent and Genterine, Inc.

The November 9, 2004 coexistence agreement states that “Genterine agrees to discontinue all future use of the name or mark MCFLY when used without MIGHTY in any capacity.” The agreement further provides that Complainant “consents to use and registration of the mark MIGHTY MCFLY by Genterine when used as stated in paragraph 1 for any goods or services.”

The Respondent’s registration date for the domain name registration <mcflyusa.com> is March 8, 2005, four months after the execution of the coexistence agreement by Complainant and Genterine, Inc.

According to Respondent’s submission, the musical group MCFLY of which Respondent claims to be the originator, had been known by that name since August 2001. Respondent claims that Wade Summerlin was simply a member of the original MCFLY group, but did not own the rights to the name. Respondent states that “as an act of good faith, we have honored his agreement with the Complainant…”

Respondent therefore appears to concede the existence and terms of the coexistence agreement and their effect on Respondent’s use of the mark MCFLY.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name <mcflyusa.com> consists of the Complainant’s trademark followed by the letters USA to refer to the United States of America. Complainant contends that Respondent’s <mcflyusa.com> domain name is confusingly similar to the MCFLY trademarks. Complainant contends that the addition of the suffix “usa” to the mark MCFLY does not alter a finding of confusing similarity in the trademark, that Respondent has no rights or legitimate interests in the domain name and that the domain name is being used in bad faith.

Complainant contends that, prior to instituting this domain name dispute, Complainant attempted to resolve the dispute through Respondent’s counsel by advising him of Respondent’s breach of the coexistence agreement. At that time, Respondent’s website used the mark MIGHTY MCFLY with the term MIGHTY appearing in diminutive font so that the term MCFLY appeared far more prominent. After Complainant’s communications with Respondent’s counsel, Respondent increased the size of the term MIGHTY in the mark MIGHTY MCFLY to comply with the coexistence agreement. However, Respondent has been unwilling to comply with other terms of the agreement and has refused further communication with the Complainant. Complainant also offered to assist Respondent with obtaining another domain name registration for MIGHTY MCFLY or derivation thereof by reimbursement of fees for securing such domain name registration. Respondent has never contacted Complainant in response to this offer.

Complainant further contends that Respondent’s use of the domain name diverts internet users away from the Complainant’s website located at <mcflyofficial.com>.

Complainant contends that the Respondent has registered and is using the domain name in bad faith with knowledge of Complainant’s ownership of the trademark MCFLY. Respondent registered the domain name <mcflyusa.com> five months after entering the coexistence agreement in which it agreed to change its mark to MIGHTY MCFLY.

B. Respondent

The Respondent submitted a late reply to the Complainant’s contentions, and the Panel has considered that reply.

Respondent contends that MIGHTY MCFLY was known by the name MCFLY since August 2001, and that Complainant has had great success in the U.K. but very limited recognition in the U.S.A.

Respondent acknowledges the change of the name from MCFLY to MIGHTY MCFLY as noted on its website, as a means of resolving its dispute with Complainant. However, Respondent contends that the payment of $10,000 under the coexistence agreement for the name change was paid to Wade Summerlin, President of Genterine Inc., who was a member of the original musical group named McFly (now Mighty McFly). Respondent contends that Mr. Summerlin did not own the rights to the name. Nevertheless, Respondent also acknowledges that, as “an act of good faith, we have honored his agreement with the Complainant but the band and name McFly were and always have been the sole property of the originator and now, only original member, of McFly (Mighty McFly).” Respondent further acknowledges that its website located at the disputed domain name refers to the agreement with Complainant to change the name of the musical group to MIGHTY MCFLY.

Respondent contends that, “since McFly/Mighty McFly was not a party to the [coexistence] agreement we did not even have a copy of it at the time that the registration was made” and therefore the registration was not made in bad faith.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant is the owner of several trademark registrations in Europe and the UK for the mark MCFLY. Respondent’s domain name <mcflyusa.com> incorporates Complainant’s registered mark in its entirety, with the addition of the suffix “usa.” The addition of a generic geographic suffix does not avoid a finding of confusion. Thus, the Panel finds that the domain name is confusingly similar to a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Respondent’s website pages, submitted with the Complaint, indicate that Respondent is, in fact, a musical group that conducts musical performances and sells merchandise to promote the musical group of which Respondent is a member (now named MIGHTY MCFLY). Respondent contends that the musical group MIGHTY MCFLY was previously known by the name MCFLY since August 2001 and further claims that this use preceded Complainant’s use. There is nothing in the Complaint indicating how Respondent is related to the party that entered into the coexistence agreement with Complainant. However, Respondent acknowledges the existence of the coexistence agreement and Respondent’s change of the name of its musical group to MIGHTY MCFLY as a good faith attempt to comply with that agreement. In addition, Respondent’s website indicates that Respondent was fully involved in the negotiations leading to the coexistence agreement:

“The confusion all started about 18 months ago when their management company contacted us to let us know that they were going to start using the name McFly for a new band that they had just put together and as a result, they wanted us to stop using the name. We’ve spent the last year and a half trying to come to some kind of compromise that will work for both groups. Since we don’t have the money that it would cost to fight for the name outright, we’ve compromised by changing our name to something similar…We hope that you will continue to support us as Mighty McFly and the years to come will be even better than the years past …”

Thus, Respondent’s own website acknowledges Respondent’s obligations under the coexistence agreement to change the name MCFLY to MIGHTY MCFLY. The coexistence agreement also required that all future use of the name or mark MCFLY be discontinued “when used without MIGHTY in any capacity…” This would also encompass use of the term MCFLY as a domain name.

Respondent registered the domain name on March 8, 2005, approximately four months after the coexistence agreement was executed. Such registration violated the terms of the coexistence agreement.

Accordingly, Complainant has satisfied its burden of showing that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Respondent claims that it registered the domain name prior to receiving a copy of the agreement between Complainant and Genterine Inc. and that, therefore, it could not have registered the name in bad faith. Respondent’s website, however, acknowledges that Respondent was involved in the negotiations to change its name, and agreed to change its name to MIGHTY MCFLY. Because Respondent proceeded to register the domain name following those negotiations and execution of the coexistence agreement, with full knowledge of Complainant’s trademark rights, the Panel finds that Respondent has registered and used the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <mcflyusa.com> be transferred to the Complainant.

 

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Lynda Zadra-Symes
Sole Panelist

Dated: May 3, 2006