Coachella Music Festival, LLC v. Francis Malama
Claim Number: FA2003001890019
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, United states. Respondent is Francis Malama (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <afrixcoachellafestival.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2020; the Forum received payment on March 27, 2020.
On March 30, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <afrixcoachellafestival.com> domain name is 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 March 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 2020 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@afrixcoachellafestival.com. Also on March 30, 2020, 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 April 24, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its claimed registered trademark rights in the COACHELLA, COACHELLA VALLEY MUSIC AND ARTS FESTIVAL and CHELLA marks which are listed and described below.
Complainant additionally claims rights at common law established through the reputation and goodwill it has acquired by its extensive use of the COACHELLA name and mark for its annual festival and other services provided in connection with same. Printouts of several news stories about Coachella Festival are attached as an exhibit to this Complaint and submits that attendance to the sold-out event aggregated over the multi-day festival is estimated at nearly 600,000 attendees. Complainant submits that or the past several years, tickets to Coachella have typically sold out in about an hour.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s trademarks arguing that merely adding the generic or descriptive term “afrix” to its famous COACHELLA marks does not distinguish the disputed domain name from the mark. See, e.g., Coachella Music Festival, LLC v. Patte Purcell FA 32747 (Forum August 18, 2015) (finding the addition of “jazz festival” did not effectively distinguish the domain name from the Complainant’s COACHELLA and COACHELLA VALLEY MUSIC AND ARTS FESTIVAL marks); Coachella Music Festival, LLC v. Jalen James Acosta / Wize Foolz Music LLC, FA 24474 (Forum Feb. 8 2019) (finding <coachellalatinfestival.com>, <coachellalatinfam.com>, and <coachellaslatinfam.com> confusingly similar to Complainant’s COACHELLA mark).
Complainant submits that the disputed domain name misappropriates sufficient textual components from the famous COACHELLA, COACHELLA VALLEY MUSIC AND ARTS FESTIVAL and CHELLA marks that an ordinary Internet user familiar with Complainant’s festival would, upon seeing the domain name, believe that an affiliation exists between the site identified by the domain name and Complainant or its festival.
Complainant adds that importantly, Respondent’s actual use of the subject domain name evidences that Respondent expects consumers to believe that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark. The disputed domain name resolves to a commercial parking page hosted at the domain name with content that is directly related to Complainant’s famous festival.
Complainant further submits that the generic top-level domain name <.com> extension is irrelevant to the confusingly similar analysis.
Complainant alleges that Respondent has no rights or legitimate interest in the subject domain name and submits that under the Policy, once a complainant asserts a prima facie case against a respondent, the respondent bears the burden of proving that it has rights or legitimate interests in the subject domain name pursuant to ¶ 4(a)(ii) of the Policy.
Complainant also argues that Respondent’s infringing use of the disputed domain name cannot constitute a bona fide offering of goods and services under the Policy. In support of this assertion Complainant refers to a screen capture of the parking page to which the disputed domain name resolves which is annexed as an exhibit to the Complaint. Complainant submits that this illustrates that the parking page is populated by pay per click advertisements for directly competitive goods and services as those offered by Complainant under its famous COACHELLA marks including “Coachella Tickets” and “Coachella Festival”.
Complainant also alleges that the disputed domain name was registered and is being used in bad faith arguing that it is settled law that the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith. See Household Int’l, Inc. v. Cyntom Enters., FA 096784 (Forum Nov. 7, 2000) (inferring that the respondent registered a well-known business name with hopes of attracting the complainant’s customers).
Complainant additionally argues that because the COACHELLA marks are so obviously connected with Complainant their use by Respondent, who has no connection with Complainant, strongly supports a finding of bad faith.
Complainant concludes that it is also well settled that the use of a domain name that is identical or confusingly similar to a complainant’s mark to host a parking page, as in the present case, is evidence of bad faith. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and produces the Coachella Valley Music and Arts Festival and owns multiple registrations for the COACHELLA, COACHELLA VALLEY MUSIC AND ARTS FESTIVAL and CHELLA marks and covering a wide variety of goods and services including:
· United States Service Mark COACHELLA registration number 3,196,119, registered on January 9, 2007 on the Principal Register for services in international class 41;
· United States Trademark COACHELLA registration number 4,270,482 registered on January 8, 2007 on the Principal Register for goods in international classes 16, 21 and 25;
· United States Service Mark COACHELLA registration number 5,235,905 registered on July 4, 2017 on the Principal Register for services in international class 43;
· United States Trademark COACHELLA registration number 5,557,242 registered on September 4, 2018 on the Principal Register for goods in international class 14;
· United States Service Mark COACHELLA (stylized) registration number 3,196,129 registered on January 9, 2007 on the Principal Register for services in international class 41;
· United States Trademark COACHELLA (stylized) registration number 4,266,400 registered on January 1,2013 on the Principal Register for goods in international classes 16 and 25;
· United States Service Mark COACHELLA (stylized) registration number 5,235,903 registered on July 4, 2017 on the Principal Register for services in international class 43;
· United States Service Mark COACHELLA VALLEY MUSIC AND ARTS FESTIVAL registration number 3,196,128 registered on January 9, 2007 on the Principal Register for services in international class 41;
· United States Trademark COACHELLA VALLEY MUSIC AND ARTS FESTIVAL registration number 3,965,563 on May 24, 2011 on the Principal Register for goods in international class 18;
· United States Trademark COACHELLA VALLEY MUSIC AND ARTS FESTIVAL registration number 4,008,651 registered on August 9 ,2011 on the Principal Register for goods in international classes 16 and 25;
· United States Trademark CHELLA registration number 5,075,233 registered on November 1, 2016 on the Principal Register for goods in international class 25;
· United States Service Mark CHELLA registration number 5,520,063 for CHELLA registered on July 17, 2018 on the Principal Register for services in international class 41.
Complainant is also the owner of the domain name <coachella.com> which is used as the address of its official website on which it promotes its goods and services.
The disputed domain name was registered on August 23, 2019, is registered in the name of Respondent and resolves to the Registrar’s parking page.
There is no information available about Respondent except that which is provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of 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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not known by the disputed domain name arguing that it has not licensed Respondent to use the COACHELLA, COACHELLA VALLEY MUSIC AND ARTS FESTIVAL and CHELLA marks; that Respondent does not have any legal relationship with Complainant that would entitle Respondent to use its registered trademarks; that Respondent has no legitimate reason for using Complainant’s COACHELLA mark as the dominant part of the disputed domain name; that Respondent’s infringing use of the disputed domain name cannot constitute a bona fide offering of goods and services under the Policy; that the screenshot of the parking page to which the disputed domain name resolves is populated by pay-per-click advertisements for directly competitive goods and services as those offered by Complainant as well as tickets to Complainant’s festival.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The disputed domain name was registered long after Complainant acquired its registered trademark rights in the COACHELLA, COACHELLA VALLEY MUSIC AND ARTS FESTIVAL and CHELLA marks and it is clear from the combination of Complainant’s COACHELLA mark with the word “festival” in the disputed domain name that on the balance of probabilities the disputed domain name was chosen and registered in bad faith to reference and to take predatory advantage of the goodwill associated with Complainant’s name, mark and festival
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <afrixcoachellafestival.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________________
James Bridgeman SC
Panelist
Dated: April 25, 2020
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