WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Max McGraw Wildlife Foundation v. Jewella Privacy LLC / T Hirst, Techmatic Enterprises, Inc., and Cerx Corporation
Case No. D2021-4254
1. The Parties
Complainant is Max McGraw Wildlife Foundation, United States of America (“United States” or “US”), represented by Buckley Fine, LLC, United States.
Respondent is Jewella Privacy LLC, United States / T Hirst, Techmatic Enterprises, Inc., and Cerx Corporation, United States.
2. The Domain Name and Registrar
The disputed domain name <mcgraw.org> is registered with DNC Holdings, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 4, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 5, 2022.
The Center verified that the Complaint together with the amended 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 10, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2022, which, on Respondent’s request, was extended to February 9, 2022. The Response was filed with the Center on February 4, 2022.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 17, 2022. 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 is the Max McGraw Wildlife Foundation, a not-for-profit corporation organized in 1962 in the State of Illinois, United States. It is registered in Illinois as a conservation foundation exempt from taxation under Section 501(c)(3) of the US Internal Revenue Code.1 Complainant asserts unregistered or common law trademark rights in the term MCGRAW based on its use in various communications and publications distributed to its members and other interested persons since at least as early as 1977. Complainant further asserts unregistered or common law trademark rights based on the use of a word and design logo comprised of the word MCGRAW preceded by two curved lines appearing to represent blades of grass. This logo appears on publications and webpages of Complainant and currently features the “TM” symbol customarily used to provide notice of an assertion of unregistered trademark rights.
Respondent provided evidence that Complainant has filed applications for registration of several MCGRAW-formative trademarks at the United States Patent and Trademark Office (USPTO), including for the word trademark MCGRAW FOUNDATION, serial number, 97085603, filing date October 21, 2021;2 the word trademark MAX MCGRAW WILDLIFE FOUNDATION, serial number 97084294, filing date October 20, 2021; and the word and design trademark referenced in the preceding paragraph, including the design code for “blades of grass”, serial number 97084338, filing date October 20, 2021. As of the date of this proceeding, none of the aforesaid three applications have been assigned to a USPTO examiner. 3
Complainant is engaged in activities relating to research regarding and preservation of wildlife. Its revenues from contributions in 2019 exceeded USD 5 million. Complainant is active in promotion of its activities through various social media platforms. Complainant operates a website at “https://mcgrawwildlife.org”, which according to Complainant received almost 190,000 hits in 2021.
According to the Registrar’s verification, Respondent is the registrant of the disputed domain name. The disputed domain name was registered on October 24, 2003.
According to Complainant, Respondent has used the disputed domain name to direct Internet users to a search parking page that includes generic search terms (e.g., motorcycle insurance quotes), and a small font “Buy this domain” link at the bottom of the page that indicates an asking price of USD 1,999. The screenshot provided as evidence by Complainant includes the disputed domain name at the top of the webpage, but it does not include a URL showing the disputed domain name. As of the date of this proceeding, Respondent directs the disputed domain name to an Amazon.com webpage offering a song for play on Amazon Music and sale of an MP3 download album by a singing trio “Lucy Angel”.4
Respondent has indicated that it is close friends and business partners with a family in the country music business that includes a writer who has written a number of “charting songs” for the singer Tim McGraw. Respondent indicates that it was part owner of the royalty stream generated by those songs. Respondent has provided a 2014 royalty statement from Broadcast Music Inc (BMI) to Rosemary and Rue LLC which it refers to as “our” LLC. While Respondent did not provide evidence of the precise connection between it and the Rosemary and Rue LLC, it did provide an IRS Form 1099 tax report that includes “Gary Hirst” as the C/O addressee, and Respondent is “T Hirst” (and Tracy Hirst is listed as contact person in the Response). The aforesaid royalty statement refers to some of the “charting” songs referenced above.
Complainant has provided evidence that it attempted to make an offer to purchase the disputed domain name from Respondent in response to an apparent offer to sell from Sedo.com LLC (“Sedo”). Complainant’s internal correspondence indicates bewilderment that Respondent refused to acknowledge or otherwise respond to its highest offer of USD 10,000. Respondent denies ever having authorized Sedo – which is not the registrar of the disputed domain name – to offer it for sale, and Respondent further denies that it ever received any correspondence or other notice of any such offer.
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)).
5. Parties’ Contentions
Complainant alleges that it owns unregistered or common law trademark rights in MCGRAW based on use in the United States in connection with operating a conservation foundation.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has used the disputed domain name in connection with a search parking page offering the disputed domain name for sale; (2) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name, and; (3) Respondent offered the disputed domain name for sale for USD 1,999, and refused Complainant’s offer for
USD 10,000, indicating an intent to sell the disputed domain name for substantially in excess of its out-of-pocket expenses. Complainant makes a number of additional assertions regarding Respondent’s use of a privacy service and the listing of a corporation for contact by Respondent.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent offered to sell the disputed domain name for USD 1,999, and refused to sell the disputed domain name to Complainant even when it made an offer of USD 10,000 through Sedo; (2) Respondent has made no bona fide use of the disputed domain name; (3) Complainant is the rightful owner of the trademark MCGRAW and had been using it for nearly 41 years before Respondent’s alleged use in the marketplace, confirming that Respondent’s refusal to sell for USD 10,000 was an attempt to take advantage of Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent asserts that it has had no contact with Sedo, did not authorize Sedo to offer the disputed domain name for sale, and has no idea why the disputed domain name was listed for sale on Sedo.
Respondent states that if it had intended to sell the disputed domain name it would not have waited 18 years following its registration.
Respondent argues that Complainant’s predominant use of its name is in the form “Max McGraw Wildlife Foundation”, and that its use of MCGRAW standing alone is limited. This includes with respect to the various tax and filing forms provided by Complainant as evidence of use.
Respondent contends that where Complainant has used MAGRAW on various webpages this has preponderantly been in connection with a design, i.e., the logo with blades of grass.
Respondent argues that a term that is “primarily merely a surname” is not protected as a trademark under US law absent a demonstration of acquired distinctiveness. Such distinctiveness includes factors such as whether the surname is rare and whether the term has a meaning associated by the public other than as a surname. Surnames may be distinguished in practice by addition of initials of given names, or by given names. According to the US Census Bureau, there are more than 25,754 persons in the United States with the surname “McGraw”. Respondent points to various applications for trademark registration at the USPTO by Complainant that involve terms other than MCGRAW, and notes that the only application for MCGRAW standing alone is accompanied by a graphic element.
Respondent notes that it registered the disputed domain name in 2003 long before Complainant had filed any trademark application at the USPTO, except for a single application for ADOPT-A-TRAPPER which was registered in 2003 and canceled in 2012.
Respondent notes that the recording artist Tim McGraw secured registration of the MCGRAW trademark in 2011.
Respondent indicates that Complainant’s members are a small part of the US population as a whole. Consumers do not generally associate the disputed domain name with Complainant’s foundation.
Respondent argues that Internet users would be unlikely to confuse the disputed domain name with Complainant.
With respect to rights or legitimate interests, Respondent states that it uses the disputed domain name in connection with a bona fide offering of goods or services in which it has a financial interest. These are Tim McGraw songs promoted by the disputed domain name.
Respondent states that until this proceeding was initiated it had never heard of Complainant.
Respondent states that it never authorized Sedo to advertise the disputed domain name for sale, and that it was never contacted by Sedo. Respondent indicates that Complainant could easily have found contact information for its privacy service that would have forwarded an email from Complainant to Respondent, but Complainant chose not to pursue that route of contact.
Respondent states that it has supported charities such as the Sierra Club and that if Complainant had approached it to help its charity, it might have assisted them. The first Respondent ever heard of Complainant was when it received the Complaint from the Center.
Respondent observes that Complainant’s internal messaging expressly notes that Respondent’s refusal to respond to a USD 10,000 offer was “weird” and “very strange”.
In respect to bad faith, Respondent reiterates that it never heard of Complainant before receiving the Complaint, and never was contacted by Sedo. Respondent further indicates that Sedo has been subject to public criticism for offering to sell domain names without the permission of the domain name owners. Respondent indicates that it made a request for an explanation of the offering for sale of its disputed domain name by Sedo, and received a response that the request would be forwarded to the Sedo legal team, without any further response from Sedo.
Respondent furnished evidence of its own experimental attempt to register Complainant’s domain name with Sedo, to which it received a response from Sedo indicating that the domain is already registered, but “[w]e can acquire this domain on your behalf within a few steps”.
Respondent indicates that it did not register the disputed domain name to disrupt Complainant’s business, but rather did so to support country music. It states “the Complainant’s accusation that our only business interest was in ‘hijacking the domain’ is totally absurd and completely unsupported.”
Respondent requests the Panel to reject the Complaint.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings 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 addresses provided in its record of registration. Courier delivery to Respondent was completed and Respondent filed a Response. 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.
A. Identical or Confusingly Similar
Complainant seeks to establish unregistered or common law rights in the trademark MCGRAW based on its use in connection with government filings, literature distributed to members and/or contributors to the conservation foundation, and to its use with an accompanying design on its website and on some publications.
As Respondent observed, as a matter of federal trademark law in the United States, registration will be refused for a term that is “primarily merely a surname” within the meaning of Section 2(e)(4) of the Trademark Act (15 U.S.C.§ 1052(e)(4)). The surname bar on registration may be overcome by demonstrating that a term is not predominately perceived by the public as a surname. That is, that it has acquired significance to the public in connection with a good or service.5
Common practice to enable surnames to be registered in the United States is to combine a given name or initials with a surname to distinguish it from others using that surname. This explains why many charitable organizations using the names of founders or honorees include given names along with surnames when registering at the USPTO, even if in common usage the charitable foundation is referred to by the surname alone.
Complainant in this proceeding is seeking to establish common law or unregistered ownership of trademark rights in the term MCGRAW. Complainant as a conservation foundation is named “Max McGraw Wildlife Foundation”. Complainant has recently filed applications for registration of MCGRAW-formative marks at the USPTO. Its application for MCGRAW includes a design element. Presumably Complainant recognizes the potential challenge to registering MCGRAW standing alone, and anticipates that adding the design element may sufficiently distinguish its surname characteristic to allow registration.
The Panel recognizes that Complainant has provided some evidence of use of the term MCGRAW as a word standing alone, such as in correspondence with its members. Whether this would be adequate to persuade the USPTO that the term standing alone has acquired sufficient significance in connection with a good or service to permit registration is not before the USPTO, which has before it Complainant’s application incorporating a design element.
The Panel finds against Complainant on the third element (bad faith) whether or not Complainant can today demonstrate common law trademark rights in MAGRAW. The Panel need not make a determination whether Complainant has established unregistered or common law trademark rights in MCGRAW, with or without the accompanying design/logo.
B. Rights or Legitimate Interests
As the Panel bases its determination on Complainant’s failure to demonstrate Respondent’s registration and use in bad faith, as a matter of Administrative Panel efficiency, the Panel does not address the element of rights or legitimate interests.
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.
Respondent asserts that it registered the disputed domain name because of its involvement in the country music business and an association with the artist Tim McGraw through a songwriter friend with whom it was also in a business that generated royalty income for Respondent. Respondent provides some evidence of this association, at least to the extent that Respondent credibly registered the disputed domain name to associate it with the recording artist. Since, as noted by Respondent, the artist Tim McGraw has successfully registered MCGRAW as a trademark at the USPTO, the question could in theory arise whether Respondent was preparing a bona fide offering of services, including because the artist already owns certain rights in the trademark.6
There are a good number of decisions under the Policy involving the legitimacy of “fan” websites and domain names, and there are various factors that go into deciding whether a fan website using an artist’s name is fair or legitimate noncommercial use.7 Here Respondent has not established a website devoted to the work of Tim McGraw the artist. The question whether it might legitimately do so is not before the Panel.8 For present purposes it is sufficient for the Panel to note that Respondent may reasonably be assumed to have registered the disputed domain name because of its association with the artist Tim McGraw, and not because it was seeking to take advantage of Complainant.
Complainant has presented some evidence that the disputed domain name may have previously been associated with a search parking page that included a link to a potential offer for sale. Although Respondent has referred to its use of the disputed domain name in connection with a website, the only demonstrated use by Respondent is the current one in connection with an Amazon Music hosted song and album.
The Panel need not make a determination whether Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. It does not appear that Respondent has used the disputed domain name for any “nefarious purpose”, but whether its use to this point is sufficient to rebut the assertion of lack of rights or legitimate interests by Complainant need not be decided. The Panel finds (below) that Respondent did not register and use the disputed domain name in bad faith. Whether it has also established rights or legitimate interests can be left undecided.
C. Registered and Used in Bad Faith
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 are “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name…”
Complainant argues that Respondent registered the disputed domain name to take advantage of Complainant’s rights in its trademark. According to Complainant, this fact is demonstrated and reinforced by Respondent’s offer to sell the disputed domain name, and its refusal to accept an offer of USD 10,000 from Complainant. Complainant has failed to prove its case.
Respondent registered the disputed domain name in 2003. At that time, and even today, Complainant has not registered the MCGRAW trademark at the USPTO. Today Complainant has several MCGRAW-formative applications that it filed in 2021 pending before the USPTO. None of those are for MCGRAW standing alone as a word mark.
Complainant’s evidence of its use of MCGRAW standing alone as a common law mark refers to letters to its members and/or contributors going back at least in a limited way as early as 1977. This is not a use that would alert a wide public to an assertion of trademark rights by Complainant. A search of Illinois corporate records would have shown that the Max McGraw Wildlife Foundation was established as an entity in 1962. When Respondent registered the disputed domain name in 2003 – as discussed above (second element) reasonably presuming for some association with the recording artist Tim McGraw – it would have been under no obligation, express or implied, to search State of Illinois corporate records looking for MCGRAW, and if it did would have found the Max McGraw Wildlife Foundation. In such case it would have been an extraordinary leap for Respondent to conclude that Complainant had pre-existing trademark rights in MCGRAW based on this corporate record. Simply put, Complainant has not provided evidence that Respondent when it registered the disputed domain name in 2003 would have had reason to believe that it was taking advantage of Complainant’s rights in a trademark by planning to sell the disputed domain name to Complainant or otherwise.
Complainant’s arguments regarding Respondent’s offer to sell the disputed domain name are unpersuasive. Respondent has categorically denied that it authorized Sedo or some other registrar to offer to sell the disputed domain name on its behalf. 9 Respondent categorically denies that it ever received any notice of an offer from Complainant. Complainant has not provided any evidence of receipt of an offer by Respondent. Complainant’s internal dialogue regarding Respondent’s behavior is revealing. The individuals involved on Complainant’s side could not fathom why Respondent would not reply to an offer of USD 10,000 for the disputed domain name. Even if Respondent had received an offer, Respondent was under no obligation to respond to it. And here, Respondent has at best made a minimum use of the disputed domain name. The net on this point is that Complainant’s evidence regarding Respondent’s alleged registration of the disputed domain name for the purpose of selling it in excess of its out-of-pocket expenses does not point in that direction. Respondent appropriately points out that if it had intended to sell the disputed domain name it probably would not have waited 18 years.
The Panel concludes that Respondent did not register and use the disputed domain name in bad faith. Respondent had no reasonable basis for actual or constructive knowledge of Complainant’s alleged MAGRAW trademark when it registered the disputed domain name, and was not attempting to impermissibly take advantage of Complainant’s alleged rights in that trademark when it registered the disputed domain name.
The Panel determines that Complainant has failed to demonstrate that Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: March 9, 2022
1 In the United States, entities that qualify under Section 501(c)(3) of the Internal Revenue Code are exempt from taxation of income and are eligible to receive tax-deductible contributions, all subject to compliance with various conditions. See, e.g., US Internal Revenue Service (IRS), Charities and Nonprofits, Exempt Organization Types, https://www.irs.gov/charities-non-profits/exempt-organization-types (Panel visit of February 23, 2022).
2 McGraw Foundation is listed as the owner of this referenced application.
3 Panel visit to USPTO TESS/TSDR of February 23, 2022.
4 Panel visit of February 23, 2022.
5 There is no fixed rule regarding the evidence establishing prima facie the surname significance of a term. The determination whether a term is “primarily merely a surname” is assessed pursuant to a multifactor test (see In re Benthin Management GMBH, 37 U.S.P.Q.2d 1332 (TTAB 1995); In re Joint-Stock Co. “Baik,” 84 U.S.P.Q.2d 1921 (TTAB 2007)). Among the most important factors is the degree to which the surname is commonly used as such. The more commonly used a surname, the less likely that it will be accepted for registration as a trademark. The policy basis for the Trademark Act’s prohibition on registering terms that are primarily merely surnames is to preserve to individuals other than the applicant the right to use their surname in a trade or business, i.e., not to create an exclusive right or monopoly for a particular surname user.
6 The artist registered the trademark in 2011, and Respondent registered the disputed domain name in 2003, preceding the trademark registration. The artist’s registration is for use covering the product “cologne” (IC 3), USPTO registration number 3919173, registration dated February 15, 2011, Panel visit to TESS of March 9, 2022.
8 If there are indeed family and songwriter associations involved it is “not entirely implausible” that the artist would not object to a fan website hosted by Respondent.
9 Registrar parking pages that include statements in one form or another about the availability of domain names for purchase are ubiquitous. The Panel has an informed impression that registrars –--as a “default position” – associate domain names with parking pages that may include search functions or other advertisement unless and until the registrant directs the domain name to a different IP address.