Coachella Music Festival, LLC and Future Festivals, LLC v. Bennett Carroccio / OurSquare Inc.
Claim Number: FA1608001687024
Complainant is Coachella Music Festival, LLC and Future Festivals, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Bennett Carroccio / OurSquare Inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <classicrockcoachella.com>, <classicrockcoachella.info>, <classicrockcoachella.net>, <classicrockcoachella.org>, <coachellapass.com>, <deserttrip2017.info>, <deserttrip2018.info>, <deserttrip2017.org>, <deserttrip2018.org>, <deserttrip2018.net>, <deserttrip2020.net>, <deserttrip2017.net>, <deserttrip2018.com>, <deserttrip2020.com>, <2016deserttrip.info>, <2016deserttrip.org>, <2016deserttrip.net>, <2016deserttrip.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2016; the Forum received payment on August 4, 2016.
On August 5, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <classicrockcoachella.com>, <classicrockcoachella.info>, <classicrockcoachella.net>, <classicrockcoachella.org>, <coachellapass.com>, <deserttrip2017.info>, <deserttrip2018.info>, <deserttrip2017.org>, <deserttrip2018.org>, <deserttrip2018.net>, <deserttrip2020.net>, <deserttrip2017.net>, <deserttrip2018.com>, <deserttrip2020.com>, <2016deserttrip.info>, <2016deserttrip.org>, <2016deserttrip.net>, <2016deserttrip.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2016 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@classicrockcoachella.com, postmaster@classicrockcoachella.info, postmaster@classicrockcoachella.net, postmaster@classicrockcoachella.org, postmaster@coachellapass.com, postmaster@deserttrip2017.info, postmaster@deserttrip2018.info, postmaster@deserttrip2017.org, postmaster@deserttrip2018.org, postmaster@deserttrip2018.net, postmaster@deserttrip2020.net, postmaster@deserttrip2017.net, postmaster@deserttrip2018.com, postmaster@deserttrip2020.com, postmaster@2016deserttrip.info, postmaster@2016deserttrip.org, postmaster@2016deserttrip.net, and postmaster@2016deserttrip.com. Also on August 8, 2016, 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 September 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant registered its COACHELLA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,196,119, registered Jan. 9, 2007). See Compl., at Attached Ex. K. Complainant filed its DESERT TRIP marks with the USTPO on May 2, 2016 (e.g., Serial No. 87022169), and claims to have common law rights in the mark based upon its use beginning on May 3, 2016. See Compl., at Attached Ex. L. Respondent registered several of the disputed domain names on that very day, and all eighteen domain names by May 9, 2016. The disputed domain names in this complaint are confusingly similar to either the COACHELLA or DESERT TRIP marks. The omission of spaces and addition of a generic top level domain (“gTLD”) identifiers “.com”, “.info”, “.net”, and “.org” do not distinguish any of the disputed domain names in question. Respondent has merely added generic or descriptive terms to the rest of the disputed domains, such as “classic rock”, “pass”, or one of the next four years (2016–20). Each of the disputed domain names is therefore confusingly similar to one or more of the Complainant’s marks.
Respondent has no rights or legitimate interests in any of the disputed domain names. Complainant has not licensed or given Respondent any permission to use the COACHELLA and DESERT TRIP marks, and Respondent is not known by the disputed domain names in any variation. The disputed domain names are resolving to websites that host parked content with unrelated pay-per-click links. See Compl., at Attached Ex. N. In the case of <coachellapass.com>, Respondent has failed to make any active use. Respondent’s use (or lack thereof) of the disputed domain names does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domains pursuant to Policy ¶¶ (c)(i) or (iii).
Respondent has engaged in bad faith registration and use of the disputed domain names. The fact that Respondent registered multiple domain names that infringe on the marks is evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). Further, since Respondent presumably gains revenue when Internet users click on the click-through links on the resolving websites of the disputed domain names, the Respondent has committed bad faith in violation of Policy ¶ 4(b)(iv). Finally, Respondent’s registration of the eighteen domain names within a week of Complainant’s announcement of the first Desert Trip Music Festival (“DTM Festival”), is evidence of opportunistic bad faith and actual notice of the Complainant’s rights in the COACHELLA and DESERT TRIP marks—bad faith under a nonexclusive analysis of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a formal Response in this proceeding. In an email to the Forum dated September 20, 2016, Respondent pointed out that “desert trip” is a generic word describing a trip into the desert. Although it makes other claims regarding the likely use of <deserttrip.com>, it fails to provide any additional evidence for the Panel to consider. Respondent registered the <classicrockcoachella.com>, <classicrockcoachella.info>, <classicrockcoachella.net>, <classicrockcoachella.org>, <coachellapass.com>, domain names on May 3, 2016. Respondent registered the <deserttrip2017.info>, <deserttrip2018.info>, <deserttrip2017.org>, <deserttrip2018.org>, <deserttrip2018.net>, <deserttrip2020.net>, <deserttrip2017.net>, <deserttrip2018.com>, <deserttrip2020.com>, domain names on May 4, 2016. Respondent registered the <2016deserttrip.info>, <2016deserttrip.org>, <2016deserttrip.net>, <2016deserttrip.com>, domain names on May 9, 2016.
B. Additional Submissions
On September 20, 2016, in response to an Order from the Panel, the Complainant filed a brief and multiple supporting exhibits. This submission alleges that the Complainant had secondary meaning in the mark DESERT TRIP by May, 9, 2016, the date that many of the disputed domain names were registered.
The Panel finds that the disputed domain names which incorporate the CHOACHELLA trademark, <classicrockcoachella.com>, <classicrockcoachella.info>, <classicrockcoachella.net>, <classicrockcoachella.org>, and <coachellapass.com>, are confusingly similar to the Complainant’s valid and subsisting trademark COACHELLA. The Panel further finds that the Respondent has no rights or legitimate interests in or to these disputed domain names and that the Respondent engaged in bad faith use and registration of these disputed domain names.
The Panel further finds that the disputed domain names that incorporate the words “desert trip” are confusingly similar to the common law trademark DESERT TRIP as used by Complainant on the date the disputed domain names were registered, that the Respondent has no rights or legitimate interests in or to these disputed domain names, and that the Respondent has engaged in bad faith use and registration of these disputed domain names.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Complainants
In the instant proceeding, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants in this matter, Coachella Music Festival, LLC and Future Festivals, LLC, appear to be related companies. Complainant alleges that both companies are affiliated with Anschutz Entertainment Group, Inc. (“AEG”). As the Respondent has not filed a formal Response, the Panel accepts as true all reasonable allegations made by the Complainant. As such, there is nothing in this record to doubt the relationship between the two companies, Coachella Music Festival, LLC and Future Festivals. LLC. The Panel, therefore, shall treat the two entities as one for purposes of this proceeding.
As the analysis of this factor of the two trademarks at issue, COACHELLA and DESERT TRIP, differs, the Panel shall treat the disputed domain names incorporating the COACHELLA mark and the disputed domain names incorporating the DESERT TRIP mark disparately.
Regarding the disputed domain names incorporating the COACHELLA mark, <classicrockcoachella.com>, <classicrockcoachella.info>, <classicrockcoachella.net>, <classicrockcoachella.org>, and <coachellapass.com>, the Panel finds that these disputed domain names are confusingly similar to the Complainant’s valid and subsisting trademark COACHELLA. The Complainant has adequately pled its rights in and to the COACHELLA mark. The Respondent arrives at the disputed domain names by merely appending various generic words related to Complainant’s services and adding the g TLD “.com,” “.org,” “.net,” and “.info.” This is all insufficient to distinguish the disputed domain names from the Complainant’s trademark.
As such, the Panel finds that the disputed domain names incorporating the mark COACHELLA are confusingly similar to the mark COACHELLA.
Regarding the disputed domain names incorporating the common law trademark DESERT TRIP, <deserttrip2017.info>, <deserttrip2018.info>, <deserttrip2017.org>, <deserttrip2018.org>, <deserttrip2018.net>, <deserttrip2020.net>, <deserttrip2017.net>, <deserttrip2018.com>, <deserttrip2020.com>, <2016deserttrip.info>, <2016deserttrip.org>, <2016deserttrip.net>, and <2016deserttrip.com>, the Panel finds these disputed domain names to be confusingly similar to the Complainant’s common law trademark. To establish trademark rights in DESERT TRIP, Complainant must establish that it had secondary meaning in this mark; however, only one week separated the announcement of the DESERT TRIP music festival and Respondent’s registration of the disputed domain names. That is, in order to establish secondary meaning, the Complainant must show that prior to May 9, 2016 (the date of the registration of these disputed domain names), but after May 3, 2016 (the date of the announcement by Complainant of the festival), it had established secondary meaning.
In a usual case, this would be impossible. This may be why some Panelists have created the notion of opportunistic bad faith. However, here, the Complainant alleges that during that week, it sold over 100,000 tickets and “immediately
used the mark on or in connection with numerous goods and services related to the Desert Trip Music Festival.” See Amended Complaint at 7.
In its Additional Submission, Complainant summarizes its efforts at creating secondary meaning prior to May 9, 2016 as follows:
Before the public announcement of Desert Trip on May 3, 2016, Complainant obtained the domain name deserttrip.com and constructed its website. Beginning on May 3, 2016 Complainants engaged in prominent and extensive use of the Desert Trip Marks on Complainants’ website at deserttrip.com. Screen captures of Complainant’s website are attached to the Complaint as Exhibit I. Complainant’s website, which prominently displays the Desert Trip Marks, was extensively promoted by Complainant in print media, newspapers, online media, and radio and television, between May 3, 2016 and May 9, 2016. These efforts resulted in a large number of consumers visiting Complainants’ deserttrip.com website and associating the Desert Trip Marks as source identifiers for Complainants goods and services. Specifically, Complainants’ website available at deserttrip.com received over 5.8 million page views and hosted nearly 1.7 million users in over 2.2 million sessions between May 3, 2016 and May 9, 2016.
That is, in the one-week period of time in question, Complainant had 5.8 million views and over 100,000 people made the decision to purchase Complainant’s product in the form of tickets to its concerts. The additional and significant advertising campaign further supports a finding of secondary meaning.
As this evidence is uncontroverted and reasonable, the Panel accepts these representations as true. Although Complainant might have more clearly claimed secondary meaning in the mark DESERT TRIP in its initial Complaint, it clearly has met this burden in its Additional Submission. Therefore, the Panel finds that the Complainant had secondary meaning in the mark DESERT TRIP by May 9, 2016.
Again, the Respondent arrives at these disputed domain names by merely adding years to trademark plus various Top Level Domain names. This, too, is insufficient to distinguish the disputed domain names from the common law mark.
As such, the Panel finds that the disputed domain names which incorporate the common law mark DESERT TRIP are confusingly similar to the common law mark DESERT TRIP.
The Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names. (For this factor, all disputed domain names herein will be considered collectively.) Complainant apparently has not licensed or given any authorization to Respondent to use either the COACHELLA or the DESERT TRIP marks in domain names. Secondly, Respondent apparently is not commonly known by any of the eighteen domain names, or any variation including COACHELLA and DESERT TRIP marks. The WHOIS information lists “Bennett Carroccio” with “OurSquare Inc.” organization as the registrant for every disputed domain name. See Compl., at Attached Ex. A. Prior panels have inferred from WHOIS that a respondent is not commonly known by a domain name when there is a lack of evidence to prove otherwise. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”).
Accordingly, the Panel finds that Respondent is not commonly known by any of the disputed domain names.
Next, Complainant asserts that Respondent is not making a bona fide offering of goods and services or making a legitimate noncommercial or fair use of any of the disputed domain names. Complainant contends that Respondent’s domain names resolve to parking pages with pay-per-clicks links to unrelated goods and services. The Panel notes screen shots of Respondent’s websites submitted in the Complaint. See Compl., at Attached Ex. N. Panels have held that respondents are responsible for the resolving websites of their domain names, even if the content is parked. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). Pay-per-click links have also been held by panels not to be a bona fide offering of goods and services or a legitimate noncommercial or fair use of a disputed domain name, regardless of whether the links are related to the complainant. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
In Respondent’s email, it claims to have some commercial interest in the disputed domain names and/or that the DESERT TRIP mark describes a trip into the desert. Regardless, as this nonresponsive Response is not accompanied by any evidence of such use and Complainant has more than adequately established secondary meaning in the mark DESERT TRIP at the time that Respondent registered the disputed domain names, the Panel dismisses these arguments as nonresponsive and irrelevant.
As such, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that the Respondent has engaged in bad faith use and registration of the disputed domain names. (Again, for this element, the disputed domain names will be considered collectively.) Complainant contends that Respondent’s registration of eighteen different domain names that are variants of the COACHELLA and DESERT TRIP marks are evidence of a pattern of bad faith registration and use. Panels have found that multiple infringing domain names indicate bad faith under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)).
Therefore, the Panel finds that Respondent has engaged in bad faith use and registration pursuant to Policy ¶ 4(b)(ii).
Complainant additionally argues that Respondent has registered the disputed domain names in an attempt to commercially gain from a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the resolving websites. Respondent presumably gains revenue when Internet users click one of the pay-per-click links on the parked websites. As previously noted, panels have ruled a respondent is responsible for the parked content on its domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
Therefore, as the Panel believes that Respondent is attempting to create confusion regarding its domain name and Complainant’s COACHELLA and DESERT TRIP marks, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Complainant further alleges that the timing of Respondent’s registration of the disputed domain names is evidence of further bad faith. Complainant contends that it first reported the DTM festival to the press in early April, and that it was officially announced on May 3, 2016. The Respondent then apparently registered the disputed domain names in close proximity to the announcement dates of the Desert Trip Festival. Previous panels have held respondents in opportunistic bad faith under Policy ¶ 4(a)(iii) when a domain name is registered shortly after a public announcement. See Twitch Interactive, Inc. v. Jason Hardwick, FA1501001601323 (Forum Feb. 25, 2015) (finding that the respondent had engaged in opportunistic bad faith pursuant to Policy ¶ 4(a)(iii), where the respondent registered the <twitchtv.net> domain name just two days after the complainant’s launch announcement for TwitchTV (which received widespread news coverage)).
As the Complainant has adequately established that it possessed secondary meaning in the mark DESERT TRIP by May 9, 2016, there is no need for the Panel to consider its arguments regarding opportunistic bad faith.
Complainant also alleges that Respondent requested an in-kind gift it values at $13,000 to transfer the disputed domain names to Complainant. As Respondent failed to file a responsive Response in this matter, these claims are uncontroverted and reasonable. As such, the Panel finds further evidence of Respondent’s bad faith use and registration of the disputed domain names because it requested compensation in excess of its out-of-pocket expenses.
Finally, Complainant asserts that Respondent had actual notice of their rights in and to the COACHELLA and DESERT TRIP marks at the time of registration. Complainant argues that the use of the entire COACHELLA or DESERT TRIP marks in each disputed domain name, plus the timeliness of the registration with Complainant’s announcements are evidence of such notice and bad faith. Given the totality of the circumstances, the Panel finds that the Respondent had actual notice of Complainant’s rights in and to the marks COACHELLA and DESERT TRIP at the time of the registration of the disputed domain names.
Therefore, the Panel finds that Respondent has engaged in bad faith use and registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <classicrockcoachella.com>, <classicrockcoachella.info>, <classicrockcoachella.net>, <classicrockcoachella.org>, <coachellapass.com>, <deserttrip2017.info>, <deserttrip2018.info>, <deserttrip2017.org>, <deserttrip2018.org>, <deserttrip2018.net>, <deserttrip2020.net>, <deserttrip2017.net>, <deserttrip2018.com>, <deserttrip2020.com>, <2016deserttrip.info>, <2016deserttrip.org>, <2016deserttrip.net>, <2016deserttrip.com> domain names be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: September 20, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page