Coachella Music Festival, LLC v. Patte Purcell
Claim Number: FA1508001632747
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Patte Purcell (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coachellavalleyjazzfestival.com>, registered with GoDaddy.com, LLC.
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.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2015; the Forum received payment on August 10, 2015.
On August 11, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coachellavalleyjazzfestival.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 August 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 2015 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@coachellavalleyjazzfestival.com. Also on August 12, 2015, 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 August 12, 2015.
On August 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and produces the Coachella Valley Music and Arts Festival, an annual festival held in Southern California (“the festival”). The first festival took place in October 1999.
Complainant owns the trade marks COACHELLA, COACHELLA MUSIC FESTIVAL, and COACHELLA VALLEY MUSIC AND ARTS FESTIVAL (“the COACHELLA marks”) which it uses in connection with the festival. Apart from its U.S. Registration Nos. 3,196,119 for COACHELLA, 3,196,129 for COACHELLA (stylized), and 3,196,128 for COACHELLA VALLEY MUSIC AND ARTS FESTIVAL, Complainant owns common law rights in the COACHELLA marks from over a decade of extensive use in commerce.
The festival attracts many mega-stars such as Radiohead, Coldplay, Red Hot Chili Peppers, Depeche Mode, Bjork, Oasis, Madonna, Prince, and Paul McCartney to perform. Over the years, attendance at the festival and its prominence in the music industry have grown. Each year, attendance at the festival is estimated at over 500,000 attendees. Tickets to the festival typically sell out within several hours.
Respondent registered the disputed domain name on May 26, 2015.
Complainant sent a cease and desist letter to Respondent on June 24, 2015, to which she responded: “You are free to purchase it from me. I’m not using it anyway. Since you think it’s so valuable, let’s start at $100,000. When you’re ready to buy, contact me. Until then, have a nice day.”
The disputed domain name is confusingly similar (pursuant to paragraph 4(a)(i) of the Policy) to Complainant’s COACHELLA trade mark because it fully incorporates Complainant’s COACHELLA mark. The mark features as the dominant portion of the disputed domain name, with the mere addition of the terms “valley” and “jazz festival.” The addition of these descriptive terms does nothing to distinguish the disputed domain names from Complainant’s mark.
The disputed domain name is also confusingly similar to Complainant’s COACHELLA VALLEY MUSIC AND ARTS FESTIVAL mark. The disputed domain name merely replaces “music” with “jazz” and omits the words “and arts”. The disputed domain name misappropriates sufficient textual components from both the COACHELLA and COACHELLA VALLEY MUSIC AND ARTS FESTIVAL marks.
Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
(i) Complainant has not licensed or authorized Respondent to use its COACHELLA marks;
(ii) Respondent has no legal relationship with Complainant that would entitle Respondent to use the COACHELLA marks;
(iii) Respondent has no legitimate reason for using the COACHELLA mark as the dominant part of the disputed domain name;
(iv) Respondent admitted she is not using the disputed domain name and offered it for sale to Complainant for $100,000. Respondent’s willingness to dispose of her interest in the disputed domain name so soon after registration as well as the disproportionate amount of money asked for are evidence of her lack of rights and legitimate interests therein;
(v) Respondent’s website to which the disputed domain name resolves displays a default “website coming soon!” page provided by the Registrar. This shows that Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name; and
(vi) Respondent is not commonly known by the disputed domain name.
The disputed domain name should be considered as having been registered and used in bad faith in view of Respondent’s offer to sell it for more than her out-of-pocket costs directly related to the domain name (paragraph 4(b)(i) of the Policy). Further, Respondent has failed to make active use of the disputed domain name and there is no conceivable use of the disputed domain name by Respondent which would be legitimate, the COACHELLA marks being so obviously connected with Complainant.
B. Respondent
The disputed domain name is not confusingly similar to Complainant’s mark – Complainant does not own COACHELLA JAZZ FESTIVAL or COACHELLA VALLEY JAZZ FESTIVAL. Complainant does not offer any jazz music at the festival but rather, hard rock, so there is no confusion. The words “MUSIC AND ARTS FESTIVAL” are disclaimed in Complainant’s U.S. trademark registrations and Complainant cannot claim exclusive ownership over the term “Coachella Valley” as it is a generic term that describes a geographic region in Southern California. “Jazz,” “festival,” and “jazz festival” are all generic terms.
The disputed domain name was registered with the original intention to organize a jazz festival but there was a subsequent change in plans to use a “locale”-oriented name.
Respondent claims to also write for the Coachella Valley Weekly, one of its sponsors. The initial selection was to utilize her association with the paper but she is not doing that.
(a) The disputed domain name is confusingly similar to the COACHELLA and COACHELLA VALLEY MUSIC AND ARTS FESTIVAL marks in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the <coachellavalleyjazzfestival.com> domain name.
(c) The disputed domain name has been registered and is being used in bad faith.
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.
The Policy does not require a complainant to have registered rights in a trade mark or service. In this case, though, Complainant has produced evidence of its registered rights in
- COACHELLA and
- COACHELLA VALLEY MUSIC AND ARTS FESTIVAL.
The question is whether the disputed domain name which comprises the words “coachellavalleyjazzfestival.com” is confusingly similar to the said trade marks.
The disputed domain name incorporates the COACHELLA trade mark in full, with the addition of the generic terms “valley” and “jazz festival.” It has been consistently decided that the addition of generic or descriptive terms to a distinctive trade mark generally results in a determination of confusing similarity to the trade mark as it does little to remove confusing similarity (see Disney Enters.Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003; The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2006-1137).
The disputed domain name also incorporates a substantial and dominant portion of Complainant’s COACHELLA VALLEY MUSIC AND ARTS FESTIVAL trade mark, namely the words “COACHELLA VALLEY”. The fact that “Coachella Valley” is the name of a geographic location does not take away from the fact that Complainant has trademark rights in COACHELLA and COACHELLA VALLEY MUSIC AND ARTS FESTIVAL and that the disputed domain name is confusingly similar thereto as it incorporates these marks in their entirety or in a substantial manner.
It is a well-established principle that the generic top-level domain (in this case “.com”), may be disregarded as it is an intrinsic part of a domain name.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been established.
In relation to paragraph 4(b)(ii) of the Policy, it has been established by many earlier UDRP panel decisions that a complainant must first establish a prima facie case of the respondent’s lack of rights or legitimate interests in the domain name at issue, after which the burden shifts to the respondent to show with evidence that it does have rights or legitimate interests. (See Hanna-Barbera Prods., Inc. v. Ent’mt Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sep. 25, 2006); and Lego Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494).)
The Panel finds that a prima facie case has been established by Complainant. Accordingly, the burden is on Respondent to demonstrate she has rights or legitimate interests.
Respondent claims to also write for the Coachella Valley Weekly, one of its sponsors and this was a reason for the initial selection of the disputed domain name. The Panel notes, however, that no evidence was given in support of this claim nor of Respondent’s claim that Coachella Valley Weekly is a “sponsor.” Another bare assertion made by Respondent is that the disputed domain name was registered with the original intention to organize a jazz festival. There is no evidence that Respondent has been in the business of organizing music festivals or had been taking steps towards such an endeavor when she registered the domain name.
Paragraph 4(c) of the Policy sets out examples of circumstances, which if found by the Panel to exist, to demonstrate a respondent’s rights to and legitimate interests in a domain name:
“(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”.
Although Respondent claims to have had an intention to start a jazz festival, no evidence of demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services has been produced by Respondent. Neither has Respondent shown that she is “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”. Respondent has in fact admitted she has no intention to use the disputed domain name. She is therefore not able to establish a bona fide offering of goods or services legitimate noncommercial or fair use of the domain name pursuant to paragraph 4(c) of the Policy.
The Panel has noted Respondent’s argument that “Coachella Valley” is the name of a geographic location and she therefore has a right to use the term in the disputed domain name since it comprises a generic term. The Panel is not persuaded though, bearing in mind Complainant’s registered trademark rights and the services in respect of which its marks were registered (viz. the organization and producing of musical events), as well as Respondent’s specific choice of generic words making up the disputed domain name (namely, “jazz festival”), that the disputed domain name was registered without the aim of trading off the reputation associated with Complainant’s music festival and its COACHELLA trade marks. The Panel also draws an inference from Respondent’s offer to sell the disputed domain name for a disproportionate sum and so soon after registration, that Respondent lacks rights and legitimate interests in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been established.
Paragraph 4(b) of the Policy provides that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coachellavalleyjazzfestival.com> domain name be TRANSFERRED from Respondent to Complainant.
Francine Siew Ling Tan, Panelist
Dated: August 18, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page