Coachella Music Festival, LLC v. Shannon Ong
Claim Number: FA1509001639586
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Shannon Ong (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coachellafestivalsingles.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.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2015; the Forum received payment on September 25, 2015.
On September 28, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coachellafestivalsingles.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 September 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@coachellafestivalsingles.com. Also on September 29, 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.
Complainant filed a timely Additional Submission on October 21, 2015,
On October 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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, Coachella Music Festival, LLC, owns a series of COACHELLA trademarks, registered with the United States Patent and Trademark Office (“USPTO”): (COACHELLA Reg. No. 3,196,119, registered Jan. 9, 2007), (COACHELLA (figurative) Reg. No. 3,196,129, registered Jan. 9, 2007), (COACHELLA VALLEY MUSIC AND ARTS FESTIVAL Reg. No. 3,196,128, registered Jan. 9, 2007), all of which claim 1999 as their first use/first use in commerce year. Complainant owns and produces the Coachella Valley Music and Arts Festival, an internationally promoted music festival held annually in Southern California.
Respondent, who has no apparent registered or unregistered prior rights or legitimate interests related to the trademark COACHELLA has registered the domain name <coachellafestivalsingles.com> domain name which is confusingly similar to Complainant’s COACHELLA mark while Respondent has no affiliation or any sort of endorsement from Complainant for doing so. The domain name contains Complainant’s mark in full, adds the generic terms “festival” and “singles,” and attaches the generic top-level domain (“gTLD”) “.com” to the domain name.
Respondent is not commonly known by the disputed domain name, as evidenced by the WHOIS record for the <coachellafestivalsingles.com> domain name. Further, Complainant has not licensed Respondent to use its COACHELLA mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use the COACHELLA mark. Respondent lacks rights or legitimate interests in the disputed domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name is used in connection with “Coachella Festival Singles” dating website. See Compl., at Attached Ex. E.
Respondent has engaged in bad faith registration and use of the <coachellafestivalsingles.com> domain name. Respondent attempts to create a likelihood of confusion with Complainant and Complainant’s mark in violation of Policy ¶ 4(b)(iv). Further, Respondent had knowledge of Complainant and its mark at the time of registration, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
B. Respondent
The <coachellafestivalsingles.com> domain name was registered October 13, 2013.
Respondent claims they registered the disputed domain name for the purpose of getting people together at Complainant’s music festival. Respondent further suggests with no further explanation or substantiation on that point, that their use of the COACHELLA mark in Respondent’s domain name does not suggest affiliation with Complainant.
Respondent asserts that they registered the disputed domain name in good faith with no intention to confuse anyone, and is planning to add a disclaimer to the disputed domain name should they be allowed to keep it in order to avert the risk of confusion.
C. Additional Submissions
In rebuttal of Respondent’s Response, the Panel takes into account that Complainant timely submitted an Additional Submission on October 21, 2015, addressing in particular the issue of nominative fair use relied upon by Respondent’s submission. Complainant’s Additional Submission elaborates on the issue of nominative fair use as per the applicable governing law and precedent and discusses how the principle of fair use is not applicable when there is a suggestion of sponsorship, affiliation or endorsement, as in the present case. Moreover, Complainant submits that the appropriate test to be applied deriving from earlier case-law as to whether or not the fair use principle is applicable, is the following:
1. The product or service cannot be readily identified without using the trademark;
2. Only so much of the mark may be used as is reasonably necessary for identification; and
3. The user does nothing to suggest sponsorship or endorsement by the trademark holder.
Complainant submits that, as none of the above 3 elements are applicable in the present case, especially given the imagery used by Respondent on the website of the domain name in dispute and the fact that Respondent has a series of similar registrations containing other marks, used to promote Respondent’s dating services, Respondent’s fair use argument is not substantiated and should be dismissed.
Complainant further argues that even if Respondent uses a disclaimer, declaring no affiliation with Complainant, Respondent’s use of the disputed domain name would still create consumer confusion with Complainant’s mark.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant, Coachella Music Festival, LLC, contends that it owns a series of COACHELLA trademarks, registered with the United States Patent and Trademark Office (“USPTO”): (COACHELLA Reg. No. 3,196,119, registered Jan. 9, 2007), (COACHELLA (figurative) Reg. No. 3,196,129, registered Jan. 9, 2007), (COACHELLA VALLEY MUSIC AND ARTS FESTIVAL Reg. No. 3,196,128, registered Jan. 9, 2007), all of which claim 1999 as their first use/first use in commerce year. Complainant states that it owns and produces the Coachella Valley Music and Arts Festival, an annual festival held in Southern California. Past panels have routinely held that registration of a mark with the USPTO sufficiently establishes a complainant’s rights in a mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, the Panel concludes that Complainant’s valid registrations of the COACHELLA trademarks with the USPTO sufficiently demonstrate Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).
Complainant argues that the <coachellafestivalsingles.com> domain name is confusingly similar to the COACHELLA mark. The domain name contains Complainant’s mark in full, adds the generic terms “festival” and “singles,” and attaches the gTLD “.com” to the domain name. Prior panels have found that the addition of generic terms is insufficient to remove confusing similarity from a disputed mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Further, previous panels have found that the addition of the “.com” gTLD is irrelevant to the analysis of confusing similarity. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). This Panel therefore determines that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Specifically, Complainant insists that Respondent is not commonly known by the disputed domain name, as evidenced by the WHOIS record for the <coachellafestivalsingles.com> domain name. The Panel notes that the WHOIS information for the disputed domain name lists “Shannon Ong” as the registrant of record. See Compl., at Attached Ex. A. Further, Complainant claims that it has not licensed Respondent to use its COACHELLA mark, nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use the COACHELLA mark. The Panel finds that Complainant’s contentions are sufficient to establish that Respondent is not commonly known by the disputed domain name, fulfilling the initial requirement of Policy ¶ 4(a)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name is used in connection with “Coachella Festival Singles” dating website. See Compl., at Attached Ex. E. Complainant claims that Respondent’s resolving website features a photograph taken at Complainant’s music festival. Complainant also contends that Complainant’s customers may enter their personal information on the disputed domain name, and uses closely associated imagery to create a false impression of affiliation with Complainant. Previous panels have found that a respondent’s attempt to pass itself off as a complainant does not have rights or legitimate interests in the disputed domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Further, past panelists have agreed that seeking Internet users’ personal information is evidence that a respondent lacks rights or legitimate interests. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). As such, the Panel finds that Respondent has not established a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant argues that Respondent attempts to create a likelihood of confusion with Complainant and Complainant’s mark in violation of Policy ¶ 4(b)(iv). Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating consumer confusion. Complainant has asserted that Respondent attempts to pass itself off as Complainant by using images from Complainant’s festival. See Compl., at Attached Ex. E. Past panels have agreed that passing off behaviors are evidence of bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent had knowledge of Complainant and its mark at the time of registration, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant alleges that Respondent explicitly uses Complainant’s COACHELLA mark and a photograph of Complainant’s music festival on its resolving website, and such use indicates bad faith pursuant to Policy ¶ 4(a)(iii). See Compl., at Attached Ex. E. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 domain name in dispute <coachellafestivalsingles.com> contains as its dominant element Complainant’s trademark COACHELLA in its entirety and the addition of other generic and commonly used terms on the domain name (“FESTIVAL”, “SINGLES”, “.COM”) do not suffice to avert the risk of confusion with Complainant’s earlier registered rights. The domain name <coachellafestivalsingles.com> is therefore confusingly similar to Complainant’s earlier legitimate rights.
Complainant has earlier registered and unregistered rights on the trademark COACHELLA while Respondent has no such rights or legitimate interests and no such submission on any earlier related rights has been put forward by Respondent.
Respondent is clearly aware of Complainant’s earlier rights on the COACHELLA trademark and indirectly clearly accepts that the risk of confusion exists by suggesting to post a disclaimer on the website. Fair use is neither proven nor substantiated in the present case by Respondent and a mere assertion that by reference to a disclaimer no further confusion may arise to consumers will not suffice to avert such a risk. Given the factual background, it is clear to this Panel that Respondent’s intended target group via the website of the domain name in dispute encompasses primarily, if not exclusively, customers of Complainant as per Respondent’s own admission in their Response, and therefore bad faith in registration and bad faith use exists on the part of Respondent. Additionally the suggestion of affiliation with or endorsement by Complainant will not be easily avoided given the fact that the intended target group of Respondent with the website of the domain name in dispute would fully coincide with the target group of Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coachellafestivalsingles.com> domain name be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated: November 6, 2015
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