Coachella Music Festival, LLC v. Imaran Ali
Claim Number: FA1801001766790
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Imaran Ali (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coachella-2018.com> and <coachella-lineup.com>, registered with Tucows Domains 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 13, 2018; the Forum received payment on January 13, 2018.
On January 15, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <coachella-2018.com> and <coachella-lineup.com> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 January 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2018 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-2018.com, postmaster@coachella-lineup.com. Also on January 15, 2018, 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 February 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Coachella Music Festival, LLC. owns and produces the famous Coachella Valley Music and Arts Festival, the United States’ premier music and arts festival.
Complainant uses the COACHELLA mark to advertise the festival, and claims rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,196,119 registered Jan. 9, 2007).
Respondent’s <coachella-2018.com> and <coachella-lineup.com> domain names are confusingly similar to the COACHELLA mark, as each contains the mark in its entirety, merely adding the descriptive term “2018” or “lineup,” a hyphen, and the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <coachella-2018.com> and <coachella-lineup.com> domain names. Respondent is not commonly known by the names and Complainant has not granted Respondent permission or license to use the COACHELLA mark for any purpose. Respondent is not using its domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the <coachella-2018.com> and <coachella-lineup.com> domain names to redirect internet users to a website which displays Complainant’s marks and purports to sell tickets to Complainant’s famous music festival.
Respondent has registered and used the <coachella-2018.com> and <coachella-lineup.com> domain names in bad faith. Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the COACHELLA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the COACHELLA mark as demonstrated by its registration of such mark with the USPTO and other registrars worldwide.
Complainant’s rights in the COACHELLA mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <coachella-2018.com> and <coachella-lineup.com> domain names to direct internet users to website(s) controlled by Respondent that are designed to impersonate Complainant so that Respondent may improperly capitalize on Complainant’s COACHELLA trademark.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the COACHELLA trademark evidences its rights in such mark for the purposes of Policy ¶4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO).
Additionally, the at-issue domain names each contain Complainant’s entire COACHELLA trademark followed by a hyphen and either the number “2018” or the generic term “lineup” each with the top-level domain name “.com” appended thereto. The differences between the at-issue <coachella-2018.com> domain name and Complainant’s COACHELLA trademark are insufficient to distinguish one from the other for the purposes of the Policy. Likewise the noted differences between Complainant’s trademark and the <coachella-lineup.com>domain name fail to differentiate the two. In fact, the inclusion of “2018” in <coachella-2018.com>, which suggests the annual nature of activities associated with Complainant’s trademark, and the term “lineup” in <coachella-lineup.com> which is also suggestive of Complainant music and arts festival, only adds to any confusion caused by the corresponding inclusion of Complainant’s trademark in each domain name. Further, both the insertion of a hyphen and affixation of a top-level domain name in an at-issue domain name are generally immaterial to analysis under Policy ¶ 4(a)(i). Therefore, the Panel finds that pursuant to Policy ¶4(a)(i) Respondent’s <coachella-2018.com> and <coachella-lineup.com> domain names are each confusingly similar to Complainant’s COACHELLA trademark See Traditional Medicinals, Inc. v. Flippa Chick, FA 1328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”); see also, Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also, Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at‑issue domain name.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Imaran Ali” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either domain name. The Panel therefore concludes that Respondent is not commonly known by either <coachella-2018.com> or <coachella-lineup.com> for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the <coachella-2018.com> and <coachella-lineup.com> domain names to direct internet users to websites controlled by Respondent. Respondent’s pertinent websites are designed to impersonate Complainant so that Respondent may improperly capitalize on Complainant’s COACHELLA trademark. Using the domain names in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii). See Microsoft Corp. v. lijiuliang, FA0912001300266 (Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … 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 also, Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the each at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4 (a)(iii) of the Policy.
Respondent registered and uses the <coachella-2018.com> and <coachella-lineup.com> domain names to pass itself off as Complainant ostensibly to offer unauthorized tickets to Complainant’s music festival. Respondent, through the at-issue domain names and additional use of Complainant’s mark, logo, and other intellectual property in conjunction with the websites addressed by such domain names, creates the false impression that Respondent’s websites are sponsored by Complainant, when they are not. Using the confusingly similar domain names to pass itself off as Complainant and trade upon Complainant’s goodwill for commercial gain demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv) and otherwise. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also, Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Additionally, Respondent registered the <coachella-2018.com> and <coachella-lineup.com> domain names knowing that Complainant had trademark rights in the COACHELLA mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain names and corresponding websites to attempt to pass itself off as Complainant. It is thus clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <coachella-2018.com> and <coachella-lineup.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
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-2018.com> and <coachella-lineup.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 13, 2018
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