Coachella Music Festival, LLC v. Piotr Zielinski / Desert Mobile Group
Claim Number: FA1708001745775
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele, of Tucker Ellis, LLP, California, USA. Respondent is Piotr Zielinski / Desert Mobile Group (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <freecoachella.com> and <freecoachella.org>, registered with Name.com, Inc.
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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 22, 2017; the Forum received payment on August 22, 2017.
On August 23, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <freecoachella.com> and <freecoachella.org> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@freecoachella.com, postmaster@freecoachella.org. Also on August 24, 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.
A timely Response was received and determined to be complete on September 11, 2017.
On September 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant Coachella Music Festival, LLC owns and produces the Coachella Valley Music and Arts Festival, which has been held annually since 1999. The festival attracts nearly 600,000 attendees, as well as some of the most groundbreaking artists from all music genres, including Jay-Z, Kanye West, Madonna, and Paul McCartney. Complainant extensively promotes its music festival through a variety of social media. Its Facebook page has over 1.7 million likes; its Twitter account is followed by over 700,000 users; and its Instagram account is followed by over 900,000 users.
Complainant owns a number of trademark registrations issued by the United States Patent and Trademark Office (USPTO) for various marks that include, in whole or in part, the term COACHELLA, as used in connection with organizing and producing musical events, as well as on various goods. Complainant also owns the domain name coachella.com
Complainant asserts that each of the disputed domain names is confusingly similar to Complainant’s trademarks. Complainant notes that the domain names freecoachella.com and freecoachella.org merely combine the COACHELLA mark with the word “free” and contends that the addition of a generic or descriptive word or term, such as “free,” does not distinguish a domain name from a distinctive mark. It further argues that the addition of a generic top-level domain name, such as “.com,” is “insufficient to avoid a finding of confusingly similarity….”
Complainant maintains that Respondent has no rights or legitimate interests in the subject domain names. Complainant indicates that the disputed domain names are used to misdirect consumers looking for Complainant’s music festival to a commercial parking website which hosts pay per click (PPC) ads for Complainant’s services, as well as other competitive services. That being the case, Complainant asserts that Respondent is not making a bona fide offering of goods or services at the subject domain names.
Complainant also maintains that Respondent is not commonly known by the disputed domain names, that Complainant has not given Respondent permission to use the COACHELLA marks, and that Respondent has made a plainly commercial use of the domain names and, thus, may not be found to be making a legitimate noncommercial or fair use of the domain names.
With respect to the issue of “bad faith” registration and use, Complainant urges that, by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed sites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such sites or of the goods or services found at such sites, within the meaning of paragraph 4(b)(iv) of the Policy. Complainant continues that “[i]t is 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 is evidence of bad faith.” According to Complainant, “it is also 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.”
B. Respondent
In his response, Respondent takes issue with Complainant’s assertion that he is trying to misdirect people searching for the Coachella Music Festival. Respondent indicates that he just bought the disputed domain names and has never posted anything yet and is not planning to misdirect anybody. According to Respondent, he bought the domain names with the intent to post free services located within the Coachella Valley for people in need (like food donations, free clothes, etc.). Respondent also contends that the disputed domains are “completely irrelevant” to Complainant’s trademarks and this case. Respondent asserts that “you can have trademark only on specific category.” Respondent notes that Complainant’s registered marks are used on or in connection with a variety of goods or services, including hotel accommodation services, halter tops, sweat shirts, T-shirts, and tank tops.
The Panel finds that: (1) each of the disputed domain names is confusingly similar to the COACHELLA mark and that Complainant has rights in such mark; (2) Respondent has no rights or legitimate interests in either of the disputed domain names; and (3) each of the disputed domain names was registered and is being used 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.
The Panel finds that each of the disputed domain names is confusingly similar to the COACHELLA marks. Each of the domain names incorporates in full the COACHELLA mark and simply adds the non-distinctive term “free” and a top-level domain. Such differences do not sufficiently distinguish either of the disputed domain names from the COACHELLA mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). See, also, Starbucks Corp. d/b/a Starbucks Coffee Co. v. Sbaai, FA 725419 (Forum May 4, 2017) (free-starbucks.com found confusingly similar to STARBUCKS mark).
The evidence further establishes that Complainant has rights in the COACHELLA marks. The registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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. . . .”).
Rights or Legitimate Interests
The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in either of the disputed domain names. The evidence indicates that the domain names in issue resolve to presumably PPC sites that include links to the Coachella Music Festival and the purchase of tickets to such festival. Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The evidence further establishes that Respondent is not commonly known by either of the disputed domain names.
The Panel concludes that the disputed domain names were registered and are being used in bad faith. The use of a disputed domain name to trade upon the goodwill of a complainant for commercial gain can, and this case does, evince bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). As determined above, each of the disputed domain names is confusingly similar to Complainant’s COACHELLA mark. Moreover, the goods and/or services found at the presumably PPC links relate, either directly or indirectly, to activities associated with the services offered by Complainant under the COACHELLA mark. Thus, Internet users, upon landing on the disputed sites, may reasonably, but incorrectly, conclude that such sites and the goods and/or services offered at such sites are sponsored by or affiliated with Complainant.
Complainant’s assertion that “you can have trademark only on specific category” is simply wrong as a matter of law. While an application for federal registration of a mark may encompass only one mark, it may encompass a variety of goods and/or services. The fact that Complainant’s COACHELLA-related registrations include such goods as halter tops, sweat tops, sweat shirts, T-shirts, and tank tops is not irrelevant to this case given that each of the disputed domain names include the term “Coachella.”
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freecoachella.com> and <freecoachella.org> domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: September 26, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page