Coachella Music Festival, LLC v. Jalen James Acosta / Wize Foolz Music LLC
Claim Number: FA1901001824474
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Jalen James Acosta / Wize Foolz Music LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <coachellalatinfestival.com>, <coachellalatinfam.com>, and <coachellaslatinfam.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2019; the Forum received payment on January 10, 2019.
On January 11, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coachellalatinfestival.com>, <coachellalatinfam.com>, and <coachellaslatinfam.com> domain names are 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 January 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2019 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@coachellalatinfestival.com, postmaster@coachellalatinfam.com, postmaster@coachellaslatinfam.com. Also on January 11, 2019, 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 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Coachella Music Festival, LLC, uses their marks COACHELLA, COACHELLA (stylized), COACHELLA MUSIC FESTIVAL, COACHELLA VALLEY MUSIC AND ARTS FESTIVAL, and CHELLA (the “COACHELLA” marks) in connection with a famous music and arts festival. Complainant has rights in the COACHELLA marks based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., COACHELLA - Reg. No. 3,196,119, registered Jan. 9, 2007). Respondent’s <coachellalatinfestival.com>, <coachellalatinfam.com>, and <coachellaslatinfam.com> domain names are confusingly similar to Complainant’s COACHELLA marks, as the domain names merely combine the COACHELLA mark with the descriptive phrases “latin festival” and “latin fam,” and a generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the <coachellalatinfestival.com>, <coachellalatinfam.com>, or <coachellaslatinfam.com> domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the COACHELLA marks in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is passively holding the disputed domain names.
Respondent registered and is using the <coachellalatinfestival.com>, <coachellalatinfam.com>, and <coachellaslatinfam.com> domain names in bad faith as indicated by Respondent’s non-use of the domain names. Furthermore, given the fame and notoriety of Complainant’s marks, it is inconceivable that Respondent could use the disputed domain names in any manner that would not infringe on Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <coachellalatinfestival.com>, <coachellalatinfam.com>, and <coachellaslatinfam.com> domain names.
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.”).
Identical and/or Confusingly Similar
Complainant claims rights in the COACHELLA marks based upon registration of the mark with the USPTO (e.g. COACHELLA - Reg. No. 3,196,119, registered Jan. 9, 2007). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel holds that Complainant’s registration of the COACHELLA marks with the USPTO is sufficient to establish rights in the marks under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <coachellalatinfestival.com>, <coachellalatinfam.com>, and <coachellaslatinfam.com> domain names are confusingly similar to the COACHELLA marks, as the domain names merely combine the COACHELLA marks with the descriptive phrases “latin festival” and “latin fam,” and add generic top-level domain “.com.” Respondent also adds the letter “s” to the COACHELLA mark in the <coachellaslatinfam.com> domain name. Addition of descriptive words and/or a gTLD to a complainant’s mark when registering a disputed domain name is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Further, the addition of letters to a complainant’s mark are insufficient under the Policy. See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”). Respondent added “.com” and descriptive phrases “latin festival” and “latin fam,” and in one instance the letter “s,” to Complainant’s marks when registering the disputed domain names. The Panel finds that the disputed domain names are confusingly similar to Complainant’s COACHELLA marks per Policy ¶ 4(a)(i).
Complainant has proved this element.
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <coachellalatinfestival.com>, <coachellalatinfam.com>, or <coachellaslatinfam.com> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the COACHELLA marks in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark is evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “Jalen James Acosta / Wize Foolz Music LLC” and no information on record indicated Respondent was authorized to register a domain name with Complainant’s mark. The Panel finds that under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <coachellalatinfestival.com>, <coachellalatinfam.com>, or <coachellaslatinfam.com> domain names.
Complainant further argues Respondent’s lack of rights and legitimate interests in the <coachellalatinfestival.com>, <coachellalatinfam.com>, and <coachellaslatinfam.com> domain names is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the names resolve to passively held websites. Inactive holding of a disputed domain name is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant contends the domain names resolve to passively held websites that display “Website Coming Soon” messages. The Panel finds that Respondent does not have rights or legitimate interests in the <coachellalatinfestival.com>, <coachellalatinfam.com>, or <coachellaslatinfam.com> domain names per Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Registration and Use in Bad Faith
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith, and Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent’s non-use of the <coachellalatinfestival.com>, <coachellalatinfam.com>, and <coachellaslatinfam.com> domain names indicates bad faith per Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sep. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). Complainant provides screenshots of the websites associated with the disputed domain names to support its contentions. The Panel finds this is evidence that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
It is impossible to conceive of any potential legitimate use of the domain names. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Here, the “Respondent has appropriated a trademark having a strong reputation and widely known.” Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003). “[I]t is not possible to conceive of any plausible actual or contemplated active use of the Domain Name[s] by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” Id. Where a domain name is “so obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, Respondent “could not have chosen or subsequently used… in its Domain Name[s] for any reason other than to trade on that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith.” Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006). The Panel finds from Complainant’s uncontested allegations and evidence that Respondent registered and is using the disputed domain names in bad faith.
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <coachellalatinfestival.com>, <coachellalatinfam.com>, and <coachellaslatinfam.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 8, 2019
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