Coachella Music Festival, LLC v. Md Hossain / Intelwebhost LLC
Claim Number: FA1911001871500
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Md Hossain / Intelwebhost LLC (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coachella-2020.com> (‘the Domain Name’), registered with 123-Reg Limited.
The undersigned certifies that 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 15, 2019; the Forum received payment on November 15, 2019.
On November 18, 2019, 123-Reg Limited confirmed by e-mail to the Forum that the <coachella-2020.com> domain name is registered with 123-Reg Limited and that Respondent is the current registrant of the name. 123-Reg Limited has verified that Respondent is bound by the 123-Reg Limited 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 November 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 2019 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@coachella-2020.com. Also on November 25, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 17, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarised as follows:
Complainant owns and produces the famous Coachella Valley Music and Arts Festival. It owns, inter alia, the trade mark COACHELLA registered in the USA for organising and producing musical events and uses that mark in connection with its festival, first use in commerce recorded as 1999. It has a web site at <www.coachella.com>.
The Domain Name registered in 2019 features the entire COACHELLA trade mark as the dominant portion of the domain name with the date ‘2020’ (the next date the festival will be held) and a hyphen added. The Domain Name plainly misappropriates sufficient textual components from the famous COACHELLA mark that an ordinary Internet user familiar with the Complainant’s festival would upon seeing any of the Domain Name likely think that an affiliation exists between the site at the Domain Name and the Complainant or its festival.
The addition of a gTLD to the subject domain name is irrelevant to the confusing similarity analysis.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not known by Complainant’s COACHELLA mark. Complainant has not licensed the Respondent to use its COACHELLA mark. When a domain name is used to impersonate a complainant such use is not a bona fide offering of goods and services. Respondent uses the Domain Names to redirect users to Respondent’s commercial web site which prominently uses the registered COACHELLA mark in a similar stylized font and copyright photos of the Complainant to appear to be an official site. The use is commercial so it cannot be non-commercial fair use.
The registration and commercial use of a domain name to redirect Internet users to a web site impersonating a complainant evidences bad faith registration and use under the Policy under ¶ 4(b)(iv) of the Policy.
The Domain Name was registered with actual knowledge of the Complainant’s rights in the COACHELLA marks as evidenced by Respondent’s explicit use of the COACHELLA marks in the Domain Name, the use of a font similar to the Complainant’s stylized font and photos from the Complainant’s official site to pass off and is bad faith under ¶ 4(b)(iii) of the Policy. Registration of a confusingly similar domain name that is obviously connected with a particular trade mark owner by someone with no connection with the trade mark owner suggests bad faith. Even if the site were not pretending to be an official site reselling of tickets is unlawful.
Respondent has given false address details in the WHOIS database.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and produces the famous Coachella Valley Music and Arts Festival. It owns, inter alia, the trade mark COACHELLA registered in the USA for organising and producing musical events and uses that mark in connection with its festival, first use in commerce recorded as 1999. It has a web site at <www.coachella.com>.
The Domain Name registered in 2019 has been used for a commercial site using the Complainant’s logo and appearing to be an official site of the Complainant.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's COACHELLA mark (which is registered, inter alia in USA for products and services relating to entertainment and has been used since 1999), a hyphen, the date ‘2020’ and the gTLD “.com.”
Adding numerals to an otherwise recognizable mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Additionally, the addition of a hyphen and a gTLD to an otherwise recognizable mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site to which the Domain Name redirects purports to operate in competition with the Complainant using the Complainant’s name and similar logo and copyright images and does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. Respondent is attempting to pass of as Complainant for commercial gain. Using a disputed domain name to deceive Internet users into believing an affiliation exists between respondent and complainant may not constitute bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services … is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the domain name.”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as uses the Complainant’s COACHELLA mark, a similar logo and photo from the Complainant’s web site without permission. The use of the Complainant's word mark, logo and photo and selling of tickets to the Complainant’s festival shows that the Respondent was aware of the Complainant and its business at the time of registration. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(iii). There his no need to consider additional alleged grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coachella-2020.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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