Coachella Music Festival, LLC v. Beaudoin, Denis / Denis Beaudoin
Claim Number: FA1703001724063
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Beaudoin, Denis / Denis Beaudoin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coachella-shuttle.com>, registered with Network Solutions, LLC; and <coachellatrailerrental.com> and <coachellatrailerrentals.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2017; the Forum received payment on March 28, 2017.
Also on March 28, 2017, Complainant sent to the Forum a Notice of Related Cases concerning the present proceeding and two other proceedings. The Notice provided as follows:
“From: Steele, David J. [mailto:David.Steele@tuckerellis.com]
Sent: Tuesday, March 28, 2017 10:04 AM
To: Michelle S.
Subject: Notice of Related Cases FA1703001724061, FA1703001724063 and
FA1703001724066 (TE No. 014223-126)
Complainants Future Festivals, LLC and Coachella Music Festival, LLC submit this joint Notice of Related Cases to inform the Forum of the relatedness of three newly filed cases.
Specifically, the following three cases are:
Future Festivals, LLC vs. Denis Beaudoin, Case No. FA1703001724061 (filed Mar. 28, 2017) for the domain names deserttripshuttles.com, deserttripshuttle.net, deserttriplimo.com, deserttrip.limo;
Coachella Music Festival, LLC vs. Denis Beaudoin, Case No. FA1703001724063 (filed Mar. 28, 2017) for the domain names
coachella-shuttle.com, coachellatrailerrental.com, coachellatrailerrentals.com; and
Future Festivals, LLC vs. Denis Beaudoin and Denis Beaudoin II, Case No FA1703001724066 (filed Mar. 28, 2017) for the domain names:
stagecoachfest.com, stagecoachfest.net, stage-coach-shuttle.com, stagecoachfestivalshuttle.com, stagecoachtrailerrental.com, stagecoachtrailerrentals.com.
All three cases involve substantially the same or similar facts, are commenced against the same respondent, and call for the determination of the same or substantially related or similar questions of law and fact. As such, and in the interest of judicial economy, Complainants believe that the cases would be suitably heard by the same panel.
Lastly, the Complainants request that this Notice be included with the information provided to the panel.
Should you have any questions, please do not hesitate to contact me.”
On March 29, 2017, GoDaddy.com, LLC and Network Solutions, LLC confirmed by e-mail to the Forum that the <coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names are registered with GoDaddy.com, LLC and Network Solutions, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Network Solutions, LLC have verified that Respondent is bound by the GoDaddy.com, LLC and Network Solutions, LLC registration agreements 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 April 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2017 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-shuttle.com, postmaster@coachellatrailerrental.com, and postmaster@coachellatrailerrentals.com. Also on April 4, 2017, 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 May 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant owns and produces the Coachella Music Festival, along with festival-related goods and services, including transportation services. Complainant uses the COACHELLA mark in conjunction with its business. Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,196,119, registered Jan. 9, 2007). See Amend. Compl., at Attached Ex. G. Respondent’s <coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names are confusingly similar to Complainant’s COACHELLA mark because they incorporate the mark in its entirety, adding the generic terms “shuttle” and “trailer rental(s)” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the<coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names. Respondent is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use the COACHELLA mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domains. Respondent’s <coachella-shuttle.com> domain name resolves to a webpage offering transportation services in direct competition with Complainant’s business offerings, using Complainant’s mark and logo, thereby giving the impression Respondent is affiliated with Complainant. See Amend. Compl., at Attached Ex. H. Respondent’s <coachellatrailerrental.com>, and <coachellatrailerrentals.com> resolve to inactive webpages. Id.
Respondent registered and is using the <coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names in bad faith. Respondent has not only registered multiple domain names infringing on Complainant’s mark, it has registered other domain names infringing on the rights of other famous marks, which are the domain names that are dealt with in the related proceedings. See Amend. Compl., at Attached Ex. I. The disputed domain names attempt to attract Internet users to Respondent’s website for commercial gain. Respondent is attempting to pass itself off as Complainant, while selling competing services. Respondent registered the <coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names with actual knowledge of Complainant and its rights to the COACHELLA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, on April 4, 2017 Respondent sent an email to the Forum which made several submission about the case and which the Panel will therefore treat as a Response.
The contents of the email is as follows:
“Please do not continue to harass our company or our employees. We consider this email a harassing email. we have notified our legal repetition and they advised us to sue for harassment should you or anyone continue to send threatening emails and letters to our company.
All of our websites clearly state that we are in no way affiliated with Coachella Music Festival, Desert Trip Music Festival, or Stagecoach Music Festival.
“Coachella” is a name of a town that was established long before your music festival existed. You do not own any exclusive rights to the name of a city.
Stagecoach is a descriptive word. Again you do not own the rights to the word “Stagecoach”
We purchased all of our domain names with the proper rights and we use are websites responsibly.
We obtained these websites legally and we will continue to run all these sites legally.
We respectfully request that you drop all claims and harassment against us.
Any further harassment issues will be forwarded to our legal team. “
10.The foregoing facts show that Respondent has no rights or legitimate interests in the disputed domain names and that Respondent registered and used them 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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant owns and produces the Coachella Music Festival, along with festival-related goods and services, including transportation services. Complainant uses the COACHELLA mark in conjunction with its business practices. Complainant submits that it registered the COACHELLA mark with USPTO (e.g., Reg. No. 3,196,119, registered Jan. 9, 2007) and has adduced evidence to that effect which the Panel accepts. See Amend. Compl., at Attached Ex. G. The evidence was to the effect that Complainant has also registered several other trademarks for COACHELLA and COACHELLA VALLEY MUSIC AND ARTS FESTIVAL. Evidence to that effect was adduced and the Panel accepts that the registration of those trademarks has been proved. The general consensus among UDRP panels is that registrations with USPTO are sufficient to show rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant’s USPTO registrations are sufficient to show rights in the COACHELLA and the COACHELLA VALLEY MUSIC AND ARTS FESTIVAL marks.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s COACHELLA mark. Complainant submits that Respondent’s <coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com domain names are confusingly similar to Complainant’s COACHELLA mark because they incorporate the mark in its entirety, adding the generic terms “shuttle” and “trailer rental(s)” and the “.com” gTLD. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See, e.g., Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). Moreover, the addition of a generic word describing the type of business in which the complainant is engaged, does not negate identity or confusing similarity which is otherwise present, as it is in this case. See, e.g., Brown & Bigelow, Inc. v. Rodela, FA 96466 (Forum Mar. 5, 2001). The objective observer looking at the domain names and the trademark and comparing the two would assume that the domain names probably related to the Coachella Music Festival and to shuttle and trailer rental services either provided by the organisers of the festival or provided with their imprimatur or approval. As such, the Panel finds that Respondent’s <coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names are confusingly similar to Complainant’s COACHELLA mark.
The Panel also finds that the disputed domain names are confusingly similar to the other trademarks for COACHELLA and COACHELLA VALLEY MUSIC AND ARTS FESTIVAL. An objective bystander would assume that as the word “Coachella” has come to refer to the music festival, the disputed domain names may also refer to and be official domain names relating to the music festival.
It should also be noted, as Complainant submits, that it has brought a number of other complaints under the UDRP where its rights have been vindicated, namely Coachella Music Festival, LLC v. Mark Williams, FA 547864 (Forum Apr. 18, 2014) (transferring coachella-weekend1.com which was used in connection with unlawful ticket sales to Complainant’s festival and online fraud); Coachella Music Festival, LLC v. Mark Jardino, FA 626326 (Forum Aug. 7, 2015) (Panel Decision to transfer ticketscoachella.com to Complainant); Coachella Music Festival, LLC v. josh greenly, FA 629217 (Forum Aug. 10, 2015) (Panel Decision to transfer coachellaticketsonline.com to Complainant); Coachella Music Festival, LLC v. Michael Liechty, FA 633389, (Forum Aug. 26, 2015) (Panel Decision to transfer coachella2016tickets.com to Complainant); see also Coachella Music Festival, LLC v. Vertical Axis Inc., FA 429552 (Forum; Dismissed Apr. 16, 2012) (case dismissed to permit transfer of the domain name coachellamusicfestival.com to Complainant). The Panel has read and considered all of those decisions.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s COACHELLA mark and to use it in his domain names adding the generic words “shuttle”, “trailer rental” and “trailer rentals” which describe aspects of Complainant’s business conducted under the trademark, namely transportation to and from the Coachella Music Festival;
(b) Respondent registered the <coachella-shuttle.com> domain name on February 21, 2013, and the <coachellatrailerrental.com> and <coachellatrailerrentals.com> domain names on January 7, 2017;
(c) the <coachella-shuttle.com> domain name resolves to a webpage offering transportation services to the Coachella Music Festival and other services relating to the festival using Complainant’s mark and logo; the <coachellatrailerrental.com> domain name resolves to an error. The <coachellatrailerrentals.com> domain name resolves to a website at High Desert Toy Hauler Rentals, Hesperia, California;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant maintains that Respondent does not have rights or legitimate interests in the <coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names. To support its argument, Complainant illustrates that Respondent is not commonly known by the disputed domain names. WHOIS information associated with this case identifies Respondent for the <coachella-shuttle.com> domain name as “Beaudoin, Denis,” and as “Denis Beaudoin” for the <coachellatrailerrental.com> and <coachellatrailerrentals.com> domain names. See Compl., at Attached Ex. A. A respondent may not be commonly known by the disputed domain name under Policy ¶ 4(c)(ii) when the WHOIS information and other evidence in the record is to the contrary. See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006). “Given the WHOIS contact information for the disputed domain [names],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain names] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003);
(f) Complainant avers it has not authorized Respondent to use the COACHELLA mark in any regard, nor is Respondent affiliated with Complainant. Complainant submits that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain names. Complainant demonstrates that Respondent’s <coachella-shuttle.com> domain name resolves to a webpage offering transportation services in direct competition with Complainant’s business offerings, using Complainant’s mark and logo, thereby giving the impression Respondent is affiliated with Complainant which he is not. See Amend. Compl., at Attached Ex. H. “Capitalizing on the well-known marks of [c]omplainant by attracting internet users to its disputed domain names where [r]espondent sells competing products of [c]omplainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010). The Panel concludes that Respondent is not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent uses the names to divert Internet users to websites, those of Respondent and A Touch of Class Limousine that offer services that compete with those offered by Complainant under its mark. See e.g., Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003);
(g) Complainant further contends that Respondent lacks rights or legitimate interests because its <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names have resolved to inactive webpages. Complainant has proved this by its evidence, although as indicated above the two domain names seem currently to resolve to an error and a promotion at a different website for differing services respectively. See Amend. Compl., at Attached Ex. H. “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute.’” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Moreover, a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). See e.g., Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005). Therefore, the Panel finds that Respondent’s failure to make an active use of “a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).” Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004).
All of these matters go to make out the prima facie case against Respondent. That being so, the onus then shifts to Respondent to rebut the prima facie case against it.
The Panel is unable to find that Respondent has rebutted that case and finds that Respondent does not have a right or legitimate interest in the disputed domain names.
That is so for the following reasons.
Respondent’s case for rebutting the prima facie case is set out in the email referred to above which, in fairness to Respondent, the Panel is accepting for practical purposes as a Response. The most important of Respondent’s points relating to this proceeding is that
““Coachella” is a name of a town that was established long before your music festival existed. You do not own any exclusive rights to the name of a city.”
The implication of this argument is that, as Complainant does not own exclusive rights to the name of a city, Respondent may use it in his domain names and that it gives him a right or legitimate interest in the domain names themselves.
In the present case, the internet user will find several features of the website to which the <coachella-shuttle.com> domain name leads which show a breach of Complainant’s trademarks and an attempt to mislead the public. In layman’s terms, it is no exaggeration to say that Respondent’s website is pretending to echo Complainant’s own website and that it does so by appropriating Complainant’s trademarks; at the least, Respondent is using Complainant’s trademark to generate business and profit for itself and A Touch of Class Limousine, which is misleading and illegal. The word COACHELLA in two of Complainant’s trademarks for COACHELLA is not in regular font or print but in a highly distinctive and memorable stylized form and one of the trademarks is expressly described in its registration certificate as follows: “The mark consists of stylized rendition of “COACHELLA””. That same stylized rendition is used on Respondent’s website at the top of each of the five pages of his website, Home, Pricing, Line up, Map and Contact Us. It is clear that the official COACHELLA mark has simply been lifted from Complainant’s website and used without permission to mislead the public. Accordingly, any internet user minded to attend the Festival and browsing the internet to plan the trip would assume that he or she had landed in the right place because of the content of the site, including the wide use of Complainant’s stylized trademark. Particularly egregious and probably persuading the Panel more than other facts in this proceeding are the pages on Line up and Contact us. The Line up page is clearly to show not the line-up of the transportation or what time the bus leaves, but to show the user, under the guise of Complainant’s trademark, that this is a website where the afficianado can find the line-up of artists at the festival and is directed to that information by providing a link to Complainant’s own website. The clear effect and probably the intention of providing that link is to suggest that the website has the aapproval or imprimatur of the organizers of the Festival. Likewise, the Contact Us page, one of the services offered under Complainant’s trademark, prominently displayed, is open to be interpreted as an invitation to contact, if not the festival itself, then at least an affiliated entity that is allowed to hold itself out as being entitled to use Complainant’s trademark and provide services as important as transport to the festival. Complainant has also submitted that Respondent’s website contains copyright photographs from Complainant’s own website and has adduced evidence to that effect that the Panel accepts. Notably, the major photograph on the home page of Respondent’s site includes the prominent ferris wheel of the festival and a passenger vehicle, being a clear representation that the website is concerned with official transport to the festival.
There is also an additional reason why the registration and use of the <coachella-shuttle.com> domain name is illegitimate. It appears from a search of the Wayback Machine that prior to the registration of the domain name, Complainant made it known publicly on its website that its shuttle services to and from the festival were those set out on its website and to be provided through Valley Music Travel. In the case of the <coachellatrailerrental.com> and <coachellatrailerrentals.com> domain names, Complainant had made it known publicly on its website that “No… trailers …will be allowed” at the festival. The proposed use of all of the domain names was therefore not only to offer competitive services but services that were contrary to those offered by Complainant under its trademark.
Putting all of this information together leads the Panel to the conclusion that Respondent is in breach of Complainant’s trademarks and is using the trademarks in a deceptive manner and to offer competing and unauthorized services to those of Complainant, negating any possibility that the wording of the domain names or the use to which they have been put, could give rise to a right or legitimate interest in the domain names. The Panel finds that they do not.
The Panel is aware that Respondent also claims there is a disclaimer on each page of his website and its wording is as follows:
“Coachella-shuttle.com and atouchofclasslimo.net are in no way affiliated with Coachelle.com or Coachella Valley Music & Arts Festival.”
The disclaimer is in small print, although it can be read, and it is in a position at the bottom of each page where it may well be overlooked and in any event it comes after the services offered on each page of the site. Leaving aside the miss-spelling of “Coachelle” for Coachella, which might create more confusion for the user, the disclaimer’s shortcoming is that it does not deny that Respondent is entitled to use the COACHELLA trademarks and provide transport services to Complainant’s festival and other information about the festival. It therefore leaves open the possibility that the shuttle and trailer rental services being offered are official or at least that they are approved or allowed by the organizers. Respondent’s difficulty overall in this case is that it asserts by its conduct that it can run a business by trading on Complainant’s trademark and using its copyright graphics and also promote the business of A Touch of Class Limousine, which is also linked to Respondent’s website. The result is that each page starts with Complainant’s unique stylized trademark and ends with a less than prominent or effective disclaimer.
The Panel is also aware that the above opinion focuses on the domain name <coachella-shuttle.com> and that there are two other domain names at issue, namely <coachellatrailerrental.com> and <coachellatrailerrentals.com>. The Panel, having regard to the whole of the evidence in this and the related proceedings, concludes that all of the domain names should be treated in the same way, as they are all part of Respondent’s modus operandi. The Panel finds that Respondent registered and has used the <coachellatrailerrental.com> and <coachellatrailerrentals.com> domain names with the same intention as it registered the <coachella-shuttle.com> domain name. All of the domain names in each of the related proceedings were registered and used as part of the same exercise and guided by the same motivation, which was to use Complainant’s trademarks without authorization, and to create the impression that their use was approved by Complainant or at least that Respondent was entitled to use them to promote his own business and that of A Touch of Class Limousine, which he clearly was not.
The only other arguments raised by Respondent are that he bought the domain names legally and that the challenge made to his entitlement to retain them and use them is a form of harassment. The Panel does not agree. All domain names are purchased subject to standardized contracts to the effect that the purchaser or registrant is not entitled to retain or use them improperly and that they may be transferred away, but only after any case brought against the registrant is proved before an independent panelist. That is all that has happened in the present case and the related proceedings and there is nothing in any of the proceedings to suggest any form of harassment by Complainant or its advisers, who have presented a detailed and persuasive case in a reasonable manner.
The Panel therefore finds that Respondent has not rebutted the prima facie case against it, that Respondent has no rights or legitimate interest in the disputed domain names and that Complainant has therefore made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant maintains that Respondent registered and is using the <coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names in bad faith as Respondent has not only registered multiple domain names infringing on Complainant’s mark, but it has registered other domain names infringing on the rights of other famous marks. The other marks were incorporated in the domain names that are the subject of the related proceedings. See Amend. Compl., at Attached Ex. I. Where the respondent has registered multiple domain names that correspond to different well-known trademarks, evidence of a pattern exists. See, e.g., Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Forum Apr. 6, 2001). The Complainant’s submission of WHOIS evidence listing Respondent as the registrant of other domain names incorporating third-party trademarks is sufficient for the Panel to establish that Respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See, e.g., N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003).
Secondly, the Panel has concluded that Respondent’s <coachella-shuttle.com> and the resulting website attempts to suggest that they are domain names and a website that relate to the Coachella Music Festival and to the shuttle and trailer rental services either provided by the organizers of the festival or provided with their imprimatur or approval. See Amend. Compl., at Attached Ex. H. Complainant argues that the disputed domain name attempts to attract internet users to Respondent’s website for commercial gain and that Respondent is attempting to pass itself off as Complainant by using the COACHELLA mark and associated logos to sell its services and those of A Touch of Class Limousine. Where, as in the present case, “Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed…” a panel may find that “this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.” Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002). The Panel so finds in the present case.
Thirdly, Complainant demonstrates that Respondent’s <coachellatrailerrental.com> and <coachellatrailerrentals.com> domain names resolve to inactive webpages, further evincing bad faith registration. See Amend. Compl., at Attached Ex. H. The Panel has already held that these two domain names should be treated in the same way as the <coachella-shuttle.com> domain name as they are all part of the same modus operandi of Respondent. The Panel finds that the probabilities are that Respondent intended to use them in the same way that he used the other two domain names. In any event, “(f)ailure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015). Therefore, the Panel finds that “[u]nder the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).” Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014). The Panel so finds in the present case.
Fourthly, Complainant contends that Respondent registered the <coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names with actual knowledge of Complainant and its rights to the COACHELLA mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, panels have concluded that the respondent “must have known about the [c]omplainant’s mark when it registered the subject domain name.” Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002). Therefore, where the circumstances in the present case indicate that Respondent had actual knowledge of Complainant's COACHELLA mark when it registered the <coachella-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the COACHELLA mark and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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-shuttle.com>, <coachellatrailerrental.com>, and <coachellatrailerrentals.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 9, 2017
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