Coachella Music Festival, LLC v. Jim Lazarides / House of Vision and Design
Claim Number: FA1910001866487
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Jim Lazarides / House of Vision and Design (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coachellaitalia.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2019; the Forum received payment on October 13, 2019.
On October 14, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coachellaitalia.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 5, 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@coachellaitalia.com. Also, on October 16, 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 November 7, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant 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 through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,196,119 registered Jan. 9, 2007). Respondent’s <coachellaitalia.com> domain name is confusingly similar to Complainant’s COACHELLA mark. Respondent incorporates the mark in its entirety and adds the geographic term “italia” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <coachellaitalia.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant licensed Respondent to use the COACHELLA mark in any way. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). Instead, the disputed domain name does not resolve to an active webpage.
Respondent
registered and use the <coachellaitalia.com> domain name in bad
faith as Respondent uses the disputed domain name to create a likelihood of
confusion with Complainant by using its COACHELLA mark in the disputed domain
name. Respondent also fails to make an active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Coachella Music Festival, LLC (“Complainant”), of Los Angeles, CA, USA. Complainant is the owner of domestic and international registrations for the mark COACHELLA, and numerous variations thereof, collectively referenced as the family of Coachella marks. Complainant has continuously used its mark since at least as early as 1999 in connection with its ownership and production of an annual world-renowned art and music festival.
Respondent is Jim Lazarides / House of Vision and Design (“Respondent”) of Sydney, Australia. The respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <coachellaitalia.com> domain name was registered on or about November 2, 2018.
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 claims to have rights in the COACHELLA mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for its COACHELLA mark (e.g. Reg. No. 3,196,119 registered Jan. 9, 2007). The Panel here finds that Complainant has adequately shown rights in the COACHELLA mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <coachellaitalia.com> domain name is confusingly similar to Complainant’s COACHELLA mark. Use of a disputed domain name that contains a mark in its entirety and adds a geographic descriptor along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”) see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds the geographic term “italia” along with the “.com” gTLD. The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s COACHELLA mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <coachellaitalia.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the COACHELLA mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. 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)”). Here, the WHOIS information for the disputed domain name lists the registrant as “Jim Lazarides / House of Vision and Design” and there is no other evidence to support a finding that Respondent was authorized to use the COACHELLA mark or was commonly known by the disputed domain name. The Panel here finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). Instead, the disputed domain name does not resolve to an active webpage. Failure to make an active use of a disputed domain name is not a bona fide offering of goods or services or legitimate noncommercial or fair use Policy ¶¶ 4(c)(i) or (iii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Here, Complainant has provided a screenshot of Respondent’s <coachellaitalia.com> domain name’s resolving webpage that displays a “website coming soon” page. The Panel here finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and used the <coachellaitalia.com> domain name in bad faith to create a likelihood of confusion with Complainant. Use of a disputed domain name to create a likelihood of confusion that respondent is somehow affiliated with complainant may be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant argues that Respondent incorporates its COACHELLA mark in the disputed domain name to create a likelihood of confusion. The Panel here finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further argues that Respondent fails to make an active use of the <coachellaitalia.com> domain name. Failure to make an active use of a disputed domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel again notes that Complainant has provided a screenshot of Respondent’s <coachellaitalia.com> domain name’s resolving webpage that display a “website coming soon” page. The Panel finds that Respondent has failed to make an active use of the disputed domain name which constitutes bad faith registration and use per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <coachellaitalia.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 21, 2019
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