Coachella Music Festival, LLC v. Gerardo Morales and Magnetic Designs
Claim Number: FA1510001644433
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Gerardo Morales and Magnetic Designs (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coachellatickets.forsale>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2015; the Forum received payment on October 28, 2015.
On October 29, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coachellatickets.forsale> 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 October 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 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@coachellatickets.forsale. Also on October 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.
A timely Response was received and determined to be complete on November 17, 2015.
On November 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 has rights in the COACHELLA trademark through several registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,196,119, registered January 9, 2007).
Respondent’s domain name <coachellatickets.forsale> is confusingly similar to Complainant’s COACHELLA trademark because it only adds the generic term “tickets” to the trademark, as well as the top-level domain (“TLD”) “.forsale,” which could increase confusion.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name, nor has the Respondent been licensed to use any of Complainant’s trademarks. Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent redirects Internet users to a number of advertising and solicitation pages.
Respondent has registered and is using <coachellatickets.forsale> in bad faith. Respondent’s use of the disputed domain name misdirects users searching for Complainant’s website to various advertising websites and therefore falls under Policy ¶ 4(b)(iii) and 4(b)(iv). Furthermore Respondent registered the subject domain name with actual knowledge of Complainant’s rights in the COACHELLA trademark.
B. Respondent
Respondent does not defend the case. Respondent registered <coachellatickets.forsale> because Respondent usually register domain names Respondent think can be used for personal projects for later use. Respondent’s original intention was to create a community in which people who bought tickets for Coachella and then were not able to assist to the event could trade with other members their purchased tickets.
Respondent states Respondent had the disputed domain name parked and advertisers were chosen by the host. Therefore, Respondent could not have acted in bad faith.
Respondent claims to be willing to transfer <coachellatickets.forsale> to Complainant, if Complainant reimburses Respondent’s investment in <coachellatickets.forsale>, for a sum of $80 (registration fee and fees for this dispute).
Complainant is the owner of the U.S. trademark registrations
No. 3,196,119 COACHELLA (word), registered January 9, 2007,
No. 3,196,129 COACHELLA (fig), registered January 9, 2007, and
No 3,196,128 COACHELLA VALLEY MUSIC AND ARTS FESTIVAL (word), registered January 9, 2007.
Respondent registered the <coachellatickets.forsale> domain name on January 21, 2015.
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.
Transfer consent issue
The Panel notes that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel also notes that Respondent seems to be willing to transfer <coachellatickets.forsale> to Complainant if Complainant reimburses Respondent’s claimed investment in the disputed domain name.
The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
“Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy”.
Therefore, the Panel decides to analyze this case under the elements of the UDRP. See further comments below.
Complainant asserts its rights in the COACHELLA trademark based on several registrations with the USPTO (e.g., Reg. No. 3,196,119, registered January 9, 2007). The Panel concludes that registration with the USPTO is sufficient to demonstrate a complainant’s rights in a trademark pursuant to Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s domain name <coachellatickets.forsale> is confusingly similar to Complainant’s COACHELLA trademark because it only adds the generic term “tickets” to the trademark, as well as the top-level domain “.forsale”, which would increase confusion. The Panel notes that the addition of a generic term to a mark does not distinguish the domain name from the trademark to which it is attached. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). In this case, the addition of the generic word “tickets” only clearly indicates that it means tickets to the Complainant’s COACHELLA music and arts festival.
Additionally, while adding TLDs to a domain name have typically not been considered to be relevant to a Policy ¶ 4(a)(i) analysis, certain TLDs that are related to the domain can increase confusing similarity. See DD IP Holder LLC v. Phill Aspden, FA 1603215 (Nat. Arb. Forum Apr. 8, 2015) (finding that the disputed domain name <dunkin.coffee> is identical to Complainant's DUNKIN COFFEE registered mark, as gTLDs that reference goods or services offered under the registered mark may be taken into account). In this case “.forsale” further indicates that the disputed domain name is clearly related to Complainant’s business and services. The Panel thus concludes that the disputed domain name is confusingly similar to the COACHELLA trademark in which Complainant has rights under Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent has not been commonly known <coachellatickets.forsale>, or is licensed to use the COACHELLA trademark in any manner. The Panel notes that the WHOIS information indicates that Respondent is identified as “Gerardo Morales,” which does not appear to resemble the disputed domain name. Respondent is thereby not commonly known by <coachellatickets.forsale>, and the Panel also notes Respondent has not claimed the opposite.
Complainant further contends that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain redirects users to various commercial websites displaying advertisements such as, “Enter to win a $500 Visa Gift Card,” “Medicare Supplemental Plans,” and “Upgrade your entertainment. Get DIRECTV”, as seen by Exhibit E of the Complaint. Redirecting users to websites that display advertisements for unrelated products and services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel finds that Respondent’s use of <coachellatickets.forsale> does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant contends that Respondent’s bad faith is evident from competing and disrupting Complainant’s legitimate business. As stated previously, Respondent uses the disputed domain name to redirect users to various commercial websites hosting advertisements. Even though a respondent did not offer goods that directly compete with a complainant, such use can still be found as competition and disruption under Policy ¶ 4(b)(iii). See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting the Mission KwaSizabantu approach and holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”).
In this case, Respondent has in fact confirmed that Respondents original intention with registering <coachellatickets.forsale> was to “create a community in which people who bought tickets for Coachella and then were not able to assist to the event could trade with other members their purchased tickets.” The Panel finds it obvious that <coachellatickets.forsale> was created and is used with the specific goal to draw attention from customers that are looking for Complainant’s services.
Complainant also argues that using the disputed domain name misdirects users searching for Complainant’s website to commercial website and therefore falls under Policy 4(b)(iv). Again, this Panel finds that the disputed domain name is especially created and used to redirect Complainant’s users to Respondent’s commercial advertising website, and Respondent has thereby acted in bad faith. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the COACHELLA trademark, and the Panel finds this actual knowledge is obvious, and that the Respondent registered <coachellatickets.forsale> 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coachellatickets.forsale> domain name be TRANSFERRED from the Respondent to the Complainant.
Petter Rindforth, Panelist
Dated: December 1, 2015
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