Coachella Music Festival, LLC and Lollapalooza, LLC v. Agustin junnior fletes herrera / badfish company
Claim Number: FA1905001842240
Complainant is Coachella Music Festival, LLC and Lollapalooza, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Agustin junnior fletes herrera / badfish company (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chelapalooza.com> and <chelapaloozaloscabos.com> (collectively “Domain Names”), registered with NameCheap, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2019; the Forum received payment on May 8, 2019.
On May 9, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <chelapalooza.com> and <chelapaloozaloscabos.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@chelapalooza.com, postmaster@chelapaloozaloscabos.com. Also on May 10, 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 June 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
In the present case, there are two named Complainants, being Coachella Music Festival, LLC and Lollapalooza, LLC. Complainants contend that the Domain Names are both confusingly similar to the COACHELLA mark owned by Coachella Music Festival, LLC and the LOLLAPALOOZA mark owned by Lollapalooza, LLC. In this matter, Complainants claim they share a specific common grievance against Respondent, and that it would be equitable and procedurally efficient to permit the joint Complaint. Based on the principles set out in the Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting case referred to above, the Panel is satisfied that it is appropriate to allow the matter to proceed with both Complainants and for the purpose of the proceeding, unless otherwise noted they shall be treated as a single entity referred to in the singular, as “Complainant”.
A. Complainant
Complainant owns and operates music festivals, generally in the United States including the Coachella music festival in Southern California and the Lollapalooza festival in Chicago. Complainant has right in the COACHELLA and LOLLAPALOOZA marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. LOLLAPALOOZA, Reg. No. 1,761,304, registered Mar. 30, 1993 and COACHELLA, Reg. No. 3,196,129, registered Jan. 9, 2007). Respondent’s <chelapalooza.com> and <chelapaloozaloscabos.com> domain names are confusingly similar to the Complainant’s marks as Respondent merely combines the “CHELA” portion of the COACHELLA Mark, with one “l” removed, and the “PALOOZA” portion of the LOLLAPALOOZA mark, adding the “.com” generic top-level domain (“gTLD”) to both domain names, and adding the geographic descriptive term “Los Cabos” to the <chelapaloozaloscabos.com> domain name.
Respondent has no rights or legitimate interest in the <chelapalooza.com> and <chelapaloozaloscabos.com> domain names as Respondent is not commonly known by the Domain Names nor is Respondent licensed, authorized, or otherwise permitted by Complainant to use Complainant’s marks. Further, Respondent’s use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Rather, Respondent uses the Domain Names to purport to offer a music festival and by doing so misdirect and confuse internet users into believing an affiliation between Respondent and Complainant’s business.
Respondent registered and uses the <chelapalooza.com> and <chelapaloozaloscabos.com> domain names in bad faith as Respondent attempts to attract internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Furthermore, Respondent had actual knowledge of Complainant’s right in its marks based on Respondent’s reference to Complainant and Complainant’s music festivals.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COACHELLA and LOLLAPALOOZA marks. Each of the Domain Names is confusingly similar to Complainant’s COACHELLA and LOLLAPALOOZA marks. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the COACHELLA and LOLLAPALOOZA marks based upon registration of the mark with the USPTO. 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 Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that each of the Domain Names is confusingly similar to the COACHELLA and LOLLAPALOOZA marks as they each incorporate significant proportions of the COACHELLA and LOLLAPALOOZA marks (the “CHELA” portion of the COACHELLA Mark, with one “L” removed, and the “PALOOZA” portion of the LOLLAPALOOZA) while (in one case) adding a geographical term and then adding the “.com” generic top-level domain (“gTLD”). Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis, with consumers aware of the Complainant likely viewing the Domain Names as a reference to Complainant’s Coachella and Lollapalooza festivals. See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD; see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the COACHELLA and LOLLAPALOOZA marks. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “Agustin junnior fletes herrera / badfish company” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are presently inactive but prior to the commencement of the proceeding resolved to websites (“Respondent’s Websites”) that referred to a competing event, described by Complainant as a “music festival”. However, while the Respondent’s Websites do copy the stylization used by Complainant’s Lollapalooza festival, the Respondent’s Websites do not provide any details about this proposed event including an exact date, exact location, or what is to occur at this event. In the absence of any further information about Respondent or the event (noting that the Respondent has not participated in this proceeding and has now rendered the Respondent’s Websites inactive), the Panel cannot conclude that the Respondent uses or has sought to use the Domain Name in respect of any event at all, let alone made a bona fide offering of goods and services or a legitimate non-commercial use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between (January 6 and January 22, 2019), Respondent had actual knowledge of Complainant’s COACHELLA and LOLLAPALOOZA marks. The COACHELLA and LOLLAPALOOZA marks are both well-known and coined marks with no meaning in the English language. Furthermore it is highly unlikely that an entity would register two domain names combining key elements from both marks (that happen to refer to the names of well-known music festivals) in the absence of awareness of the COACHELLA and LOLLAPALOOZA marks. In the absence of rights or legitimate interests of its own, this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s COACHELLA and LOLLAPALOOZA marks for commercial gain by using the confusingly similar Domain Names to resolve to websites that purport to associate themselves with the Complainant. While it is unclear whether or not Respondent is actually offering a competing music festival, the manner in which the Respondent’s Website displays “chelapalooza” clearly replicates the manner in which the LOLLAPALOOZA mark is displayed on the Lollapalooza website, indicating a clear intention by Respondent to pass itself off as Complainant or at least as associated with Complainant in the offering of some form of event. Use of a domain name in this manner is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services. Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chelapalooza.com> and <chelapaloozaloscabos.com> domain names be TRANSFERRED from Respondent to Complainant Coachella Music Festival, LLC.
Nicholas J.T. Smith, Panelist
Dated: June 6, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page