Coachella Music Festival, LLC v. MICHAEL LIECHTY
Claim Number: FA1508001633389
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is MICHAEL LIECHTY and IDONTHAVEONE (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coachella2016tickets.com>, registered with eNom, Inc.
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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2015; the Forum received payment on August 13, 2015.
On August 17, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <coachella2016tickets.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@coachella2016tickets.com. Also on August 18, 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 August 18, 2015.
On August 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman as Panelist.
On August 26, 2015, the Forum provided the Panel with a copy of an email response from WhoisGuard which confirmed that it provided anonymous privacy protection services to Respondent in respect of the registration of the disputed domain name.
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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner and organizer of the Coachella Music Festival which it first held in 1999 and has been held annually at the 78-acre Empire Polo Club in the Southern California desert, since 2001. The festival has established a substantial reputation and attendance has grown to 500,000 from 29,000 attendees at the first event in 1999. The list of artists who have performed include: Rage Against the Machine, Radiohead, Daft Punk, Coldplay, Tool, Red Hot Chili Peppers, Bjork, Depeche Mode, Nine Inch Nails, The Cure, Beastie Boys, Oasis, Jane’s Addiction, The Pixies, Madonna, Roger Waters, Prince, and Paul McCartney.
Complainant has established a website available at <coachella.com> to promote the event and create an online community among attendees.
In this Complaint, Complainant relies on its rights in the service mark registrations for COACHELLA listed below and the rights that it has acquired at common law through its use of the COACHELLA mark in commerce relating to the business of the festival for over a decade.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s COACHELLA mark. In this regard, Complainant refers to the visual and phonetic similarity between its COACHELLA mark and the disputed domain name and argues that, upon seeing the disputed domain name, an ordinary Internet user who is familiar with the goods or services distributed under the mark would believe that an affiliation exists between the website identified by the disputed domain name and the owner or licensed user of the mark. In support of this assertion Complainant cites the decisions in Awesome Kids LLC v. Selavy Comm., D2001-0210 (WIPO Apr. 16, 2001) and Jews for Jesus v. Brodsky, 993 F.Supp. 282, 296 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998) (holding JEWS FOR JESUS and jewsforjesus.org confusingly similar).
Complainant submits that the dominant portion of the disputed domain name <coachella2016tickets.com> features the entire COACHELLA trademark and merely adds the descriptive terms “2016” and “tickets” to form the domain name and that the addition of these ordinary descriptive terms does not distinguish the disputed domain name from Complainant’s mark. In support of this submission Complainant cites the decisions of the panelists in Coachella Music Festival, LLC v. Mark Jardino, FA 626326 (Nat. Arb. Forum Aug. 7, 2015) (finding ticketscoachella.com confusingly similar to Complainant’s Coachella Marks); Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark); The Neiman Marcus Group, Inc., et al. v. Rosanna Silverio, FA 246433 (Nat. Arb. Forum Mar. 24, 2009) (finding lastcallsale.com and lastcallsale.net confusingly similar to complainant’s LAST CALL mark pursuant to Policy ¶ 4(a)(i)).
Complainant also argues that the additional terms “tickets” and “2016” are likely to be taken to refer to the sale of tickets for Complainant’s festival. In this regard Complainant cites the decisions in Space Imaging LLC v. Brownell, AF-0298 (eResolution Sep. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a term that has an obvious relationship to the complainant’s business); Bridgestone Corporation v. Vahid Chitsaz, FA 15367 (Nat. Arb. Forum Aug. 1, 2007) (holding that the addition of the related terms “tire” and “sale” to complainant’s BRIDGESTONE mark “do not negate any confusing similarity between the disputed domain name and the mark”).
Complainant further submits that the addition of the generic top-level domain name “.com” extension is insufficient to avoid a finding of confusing similarity between the subject domain name and Complainant’s COACHELLA mark.
Complainant alleges that Respondent has no rights or legitimate interest in the disputed domain name. Complainant submits that under the Policy, once the complainant asserts a prima facie case against the 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. See G.D. Searle & Co. v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Complainant asserts 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.
Complainant argues that it follows that Respondent has no legitimate reason for using its COACHELLA mark as the dominant part of the disputed domain name <coachella2016tickets.com>.
Complainant refers to a screen capture of the website to which the disputed domain name resolves which shows that the disputed domain name is being used to redirect users to Respondent’s commercial website which offers for sale tickets to Complainant’s music festival. Complainant states that the tickets to Complainant’s Coachella Music Festival are revocable licenses which cannot be commercially resold. Accordingly, any use of the subject domain name by Respondent to sell or advertise the sale of tickets to Complainant’s Coachella Music Festival either directly or indirectly violates the license agreement, or induces consumers to violate the license agreement. Complainant submits that such use cannot amount to a bona fide offering of goods and services at the subject domain name and does not constitute a legitimate interest in the subject domain name under the circumstances described in ¶ (4)(c)(i) of the Policy.
Additionally Respondent is not commonly known by the subject domain name. Respondent’s name, as listed in the WhoIs information for the subject domain name, is “MICHAEL LIECHTY” and “IDONTHAVEONE.”
Complainant submits that neither is Respondent making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainant argues that Respondent has made a plainly commercial use of the subject domain name. Respondent’s webpage includes an “Affiliate Disclaimer” which indicates that Respondent is earning a commission from the redirected Internet traffic.
Complainant submits that the disputed domain name was registered and is being used in bad faith. Complainant argues that it is well-settled that the registration and commercial use of a domain name, that is confusingly similar to a complainant’s mark, to create a likelihood of confusion for commercial gain supports a finding of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); Dollar Financial Group, Inc. v. Bankshire Corp., FA 13686 (Nat. Arb. Forum Jul. 30, 2007) (respondent’s use of a domain name confusingly similar to a complainant’s mark to redirect Internet users to respondent’s own commercial website offering goods and services in direct competition with complainant’s goods and services evidences bad faith registration and use under the Policy); S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum Jul. 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Complainant submits that the only reason for Respondent’s registration of the confusingly similar domain name is to unlawfully misdirect users searching for Complainant to Respondent’s commercial website.
Furthermore, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the COACHELLA mark as evidenced by Respondent’s explicit use of COACHELLA in the domain name and on Respondent’s website, a screen-shot of which has been submitted in evidence as an annex to the Complaint. In this regard Complainant refers to the decisions in Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002); Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (respondent’s actual knowledge of a complainant’s rights in the ULTRAGUARD mark evidenced that the disputed domain name was registered in bad faith).
Complainant further submits that Respondent also had constructive knowledge of Complainant’s rights in its Coachella Marks due to Complainant’s prior trademark registration of the Coachella Marks throughout the world. The registration of a confusingly similar domain name with constructive knowledge of Complainant’s mark, without more, is evidence of bad faith registration and use of the domain name pursuant to ¶ 4(a)(iii) of the Policy. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
Furthermore, Complainant argues 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 (Nat. Arb. Forum Nov. 7, 2000) (inferring that the respondent registered a well-known business name with hopes of attracting the complainant’s customers). Because the COACHELLA mark is so obviously connected with Complainant, and because the subject domain name so clearly references Complainant’s COACHELLA mark, registration by Respondent, who has no connection with Complainant, strongly suggests bad faith.
Finally, the commercial resale of tickets to Complainant’s Coachella Music Festival by Respondent is unlawful.
B. Respondent
In a brief Response, Respondent concedes that since the word “Coachella” is used in the disputed domain name, a person viewing the URL alone understandably might assume that it was associated with Complainant. He also concedes that he is not associated with Complainant and that his use of the disputed domain name would not be protected by fair use and states “so I do not have any rights here.”
Respondent also concedes that his website was intended to be used for commercial gain, however he denies that there was ever any intention of “trying to deceive anyone into thinking they had landed on the actual Coachella.com website.”
In conclusion, Respondent consents to the transfer of the disputed domain name to Complainant, stating: “The Respondent respectfully requests that the Administrative Panel allows the transfer of the domain to the Complainant.”
Complainant owns and produces the Coachella Valley Music and Arts Festival (“Coachella Music Festival” or the “Festival”), the country’s premier music and arts festival.
Complainant is the owner of the following United States Service Mark Registrations:
US Service Mark Registration No. 3,196,119 COACHELLA, registered on the Principal Register on January 9, 2007 for services in international class 41.
United States Service Mark Registration No. 3,196,129 COACHELLA (stylized) registered on the Principal Register on January 9, 2007 for services in international class 42; and
United States Service Mark Registration No. 3,196,128 for COACHELLA VALLEY MUSIC AND ARTS FESTIVAL.
Each registration is in respect of “Entertainment, namely, organizing and producing musical events in class 41 (U.S. CLS 100, 101 and 107)” and claims a first use in commerce of October, 1999.
The disputed domain name <coachella2016tickets.com> was registered May 26, 2015.
Respondent is the owner of the disputed domain name registration and has established a website to which the disputed domain name resolves on which he offers for sale tickets to Complainant’s music festival in 2016.
For completeness, this Panel notes that the words “IDONTHAVONE” are inserted in the field in the WhoIs database that records the “Organisation Name” presumably to reflect the fact the disputed domain name is not registered on behalf of an organization. There is no indication that Responded has furnished incorrect information when registering the 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.
Preliminary Issue- Consent to Transfer
In his Response, Respondent has consented to transfer the disputed domain name to Complainant.
However, after the initiation of this proceeding, eNom, inc placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
In similar circumstances, other panels have decided to forego the traditional UDRP analysis and order an immediate transfer of the disputed domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). These decisions are consistent with the approach noted at ¶ 4.13 of The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") which states that “[w]here the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone.” The Overview however notes that in other cases the panelists have proceeded to decide the complaint on the merits notwithstanding the fact that the respondent conceded.
In the circumstances of the present case, this Panel has decided to fully analyze and test the Complaint against requirements of in ¶ 4(a)(i) of the Policy to provide the parties with a full understanding of their respective rights and obligation and in any event ¶ 4(a)(i) of the Policy imposes an obligation on a complainant to prove its case.
Complainant has provided convincing evidence of its ownership of and rights in the COACHELLA mark through its ownership of the above-listed COCHELLA service mark registrations and over a decade of use of the mark on association with its music festival.
The disputed domain name <coachella2016tickets.com> consists of four elements viz. Complainant’s COACHELLA mark, the number “2016”, the word “tickets” and the generic top-level domain name extension “.com”. Complainant’s COACHELLA trademark is the only distinctive element of the disputed domain name. Both the number “2016” and the word “tickets” are descriptive elements, clearly are intended to refer to tickets for Complainant’s event in 2016, and in the circumstances of the present Complaint the generic top- level domain name extension may be ignored for the purpose of comparison.
Respondent has conceded, that there is a likelihood that Internet users will be confused into believing that there is an association between the disputed domain name and Complainant.
In the circumstances, this Panel finds that the disputed domain name is confusingly similar to Complainant’s COACHELLA mark, particularly as the additional terms “2016” and “tickets” are likely to be taken, as intended by the registrant of the domain name, to refer to the sale of tickets for Complainant’s festival.
Complainant has therefore satisfied the first element of the test in ¶ 4(a)(i) of the Policy.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name: the disputed domain name <coachella2016tickets.com> was registered May 26, 2015 at a time when Complainant had acquired rights and a substantial reputation in the use of the COACHELLA mark; Respondent is using the disputed domain name to attract Internet users who are seeking to purchase tickets for Complainant’s Coachella Music Festival without the authority of Complainant; Complainant has not granted Respondent the right to sell these tickets; the sale of tickets to Complainant’s Coachella Music Festival in such circumstances either directly or indirectly violates the license agreement for a permitted purpose; Complainant has not permitted Respondent to use the COACHELLA mark in the disputed domain name; Respondent is not commonly known by the domain name and the domain name is being used for a commercial purpose. It is well established that in such circumstances the burden of evidence shifts to Respondent under the second element of the test in ¶ 4(a)(ii) of the Policy.
In the present case Respondent makes no claim to rights in the disputed domain name. In the brief Response he concedes that he not associated with Complainant; that his website was intended to be used for commercial gain; that his use of the disputed domain name would not be protected by fair use and he admits that he does not have any rights.
Complainant has therefore satisfied the second element of the test in ¶ 4(a)(ii) of the Policy.
Respondent’s defense to this Complaint is that there was never any intention of “trying to deceive anyone into thinking they had landed on the actual Coachella.com website.” This Panel takes this statement to mean that Respondent’s position is that the disputed domain name was not registered in bad faith.
It is clear and not denied that the disputed domain name was consciously and intentionally chosen and registered to have a direct reference to Complainant’s music festival and to attract Internet users who are looking to buy tickets for the event in 2016.
Even if one accepts Respondent’s submission that there was no intention of deceiving anyone into believing that the website to which the disputed domain name directs, is associated with Complainant, it is clear from the screen capture of the website to which the disputed domain name resolves that Respondent has been giving the public the false impression that he can provide valid tickets for the event. The website prominently states: “Buy Your Coachella 2016 Tickets Here!”, and further states “Find Your Tickets Use the coupon code TICK 13 to save $10 on your order of $350 or more!”
Tickets to the festival are sold by Complainant to the public as revocable licenses which cannot be commercially resold. Respondent is not authorized by Complainant to sell festival tickets and there is no lawful market in their re-sale. When the disputed domain name was registered and subsequently used to divert Internet users wishing to purchase such tickets, Respondent must have been aware that it could not provide valid tickets to the public.
For these reasons, this Panel finds that on the balance of probabilities that the disputed domain name was registered and is being used in bad faith.
Complainant has therefore satisfied the third and final element of the test in ¶ 4(a)(iii) of the Policy and is entitled to succeed in this Complaint.
DECISION
Having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coachella2016tickets.com> domain name BE TRANSFERRED from Respondent to Complainant.
___________________________________
James Bridgeman, Panelist
Dated: August 26, 2015
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