Coachella Music Festival, LLC v. Russell Smelser / Desert Vapors LLC
Claim Number: FA1901001824676
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Russell Smelser / Desert Vapors LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coachella247.com>, registered with Go Montenegro Domains, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2019; the Forum received payment on January 11, 2019.
On January 14, 2019, Go Montenegro Domains, LLC confirmed by e-mail to the Forum that the <coachella247.com> domain name is registered with Go Montenegro Domains, LLC and that Respondent is the current registrant of the domain name. Go Montenegro Domains, LLC has verified that Respondent is bound by the Go Montenegro Domains, 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 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 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@coachella247.com. Also on January 15, 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.
A Response was received on February 9, 2019.
On February 11, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Complainant’s additional submission was received on February 14, 2019 and complies with Forum Supplemental Rule 7(a).
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 name 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 country’s premier music and arts festival.
Complainant has rights in the COACHELLA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <coachella247.com> domain name is identical or confusingly similar to Complainant’s mark as it merely added the descriptive term “247” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <coachella247.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to host a commercial parking page populated by pay per click advertisements.
Respondent registered and uses the <coachella247.com> domain name in bad faith. Respondent uses the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s pay-per-click webpage.
B. Respondent
Respondent contends as follows:
The term “Coachella” is a generic term, which in this case, represents a geographic location in Southern California.
Complainant does not hold exclusive rights to the term “Coachella,” and Respondent’s <coachella247.com> domain name has nothing to do with Complainant.
Respondent does have rights and legitimate interests in the <coachella247.com> domain name. Respondent’s domain name refers to the geographic location located in Southern California. Respondent has been a lifelong inhabitant of the Coachella Valley and its assorted cities and owns numerous domain names that use terms exclusive to that locality in pursuit of his exclusive business interests and hobbies. Respondent has thus far been unable to pursue these ideas and have thus left the domain name parked, however has not profited off the parked links.
Respondent did not register or use the domain name in bad faith. Respondent has never attempted to sell the domain name and has no interest in selling it. Respondent does not desire to disrupt Complainant’s or anyone else’s business. Respondent has never intended to cause consumer confusion with the links located at the parked webpage.
C. Additional Submissions
Complainant contends in its Additional Submission as follows:
Respondent’s fair use defense fails because the evidence shows that Respondent uses the domain name to display commercial links related to and competing with Complainant’s services.
Respondent does not show evidence that it made any bona fide offering of goods or services regarding the domain name or demonstrable preparations to use the domain name in connection with any bona fide offering of goods or services.
Respondent intentionally used a commercial parking service and in doing so effectively and improperly capitalized on Complainant’s trademark for its commercial benefit. Doing so is also in violation of an agreement made with the parking page provider that it would not infringe the intellectual property rights of others.
Complainant has rights in the COACHELLA mark through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the COACHELLA trademark.
Respondent uses the at-issue domain name to address a parking page that links to services related to, and competing with, those offered by Complainant.
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.”).
Respondent submitted its Response to the dispute resolution provider, the Forum, on February 9, 2018. However, the deadline to respond in this proceeding was February 8, 2019. Respondent received notice of the deadline in a Written Notice sent to Respondent on January 15, 2019. The Forum does not consider the Response to be in compliance with ICANN Rule 5. Notwithstanding the Response’s noncompliance with Rule 5 the Panel may, at its discretion, nevertheless choose to accept and consider it. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Here, the Panel recognizes that the Response was less than 24 hours tardy and that the short delay did not materially prejudice Complainant’s ability to pursue its claims; nor did the late filing impact the Panel’s workload or its ability to decide the matter at bar in a timely fashion. Importantly, Complainant’s Additional Submission does not object to the Response’s noncompliance with ICANN Rule 5 but instead concerns itself with the merits of the substantive issues raised in said Response. In light of the forgoing the Panel, in its discretion, accepts and considers the Response.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has a USPTO registration for its COACHELLA mark. Such registration is convincing evidence of Complainant’s rights in such mark under 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.”).
Respondent’s <coachella247.com> domain name contains Complainant’s COACHELLA trademark followed by the generic/descriptive numerals “247” (twenty-four / seven). The domain name concludes with the top-level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <coachella247.com> domain name is confusingly similar to Complainant’s trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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).
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).
Here, Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. 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 the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Russell Smelser / Desert Vapors LLC” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <coachella247.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <coachella247.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown 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).
Additionally and as discussed below regarding bad faith, Respondent uses the <coachella247.com> domain name to address a parking page displaying pay-per-click links to third party services some of which are in competition with Complainant. Respondent’s <coachella247.com> parking page was created with Respondent’s consent and at Respondent’s direction for Respondent’s commercially benefit. Using the domain name 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 pursuant to Policy ¶ 4(c)(iii). 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.”).
In its Response, Respondent claims that the Complainant’s COACHELLA trademark is a geographic identifier, that Respondent’s lives in the Coachella Valley and thus these circumstances give Respondent the right to use the at-issue domain name as it does. However, Respondent also admits that it intentionally engaged the domain name to host a commercial parking page. Notably, the <coachella247.com> parking page contains links such as “Coachella Tickets”, “Lollapalooza” (a directly competitive music festival), and “Concert Tickets,” among other commercial links. Since the pay-per-click links relate to Complainant’s trademarked services Respondent is improperly trading off the goodwill associated with Complainant’s COACHELLA trademark. Respondent profits from the confusingly similar domain name because of its trademark value rather than the domain name’s descriptive reference a geographical area. Using a confusingly similar domain name to drive traffic to commercial links associated with the domain name’s underlying trademark, is not a bona fide use of the domain name under the Policy. See Hard Rock Cafe International (USA), Inc. v. Ryhan Estate Vineyards, FA 35573 (Forum Jan. 14, 2009) (use of a confusingly similar domain name to resolve to a website displaying third-party links to unrelated websites is not a “a bona fide offering of goods and services”); see also, 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.”).
Indeed, while Respondent claims that there are benign uses for its <coachella247.com> domain name there is no evidence in the record showing that Respondent actually made preparations to use the domain name in any manner other than as it actual uses the domain name --to address a commercial parking page. Since there is no evidence of any “demonstrable preparations” to use the domain name in some bona fide manner, the fact that there may be benign uses for the domain name is irrelevant to the Panel’s Policy ¶ 4(c)(ii) analysis.
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name. Respondent’s failure to overcome Complainant’s showing requires the Panel to conclusively find that Respondent lacks rights and lacks interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interest Respondent intentionally uses the <coachella247.com> domain name to host a commercial parking page replete with pay-per-click links, some of which reference Complainant’s competition. Using the confusingly similar domain name to display such links and drive traffic to third parties demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc.v. Fees, FA 937704 (Forum Apr. 25, 2007) (finding 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)); see also, American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coachella247.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 17, 2019
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