Coachella Music Festival, LLC v. Richard kutbach
Claim Number: FA1910001866739
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Richard kutbach (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kidchellamusicfestival.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2019; the Forum received payment on October 14, 2019.
On October 15, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kidchellamusicfestival.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 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 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@kidchellamusicfestival.com. Also on October 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.
On November 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 United States’ premier music and arts festival. Complainant uses the COACHELLA trademark to advertise the festival, as well as the CHELLA trademark for a complementary event that takes place in between the COACHELLA festival, and claims rights in the trademarks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., COACHELLA, Reg. No. 3,196,119 registered Jan. 9, 2007, and CHELLA, Reg. No. 5,075,233, registered on Nov. 1, 2016). Respondent’s <kidchellamusicfestival.com> domain name is confusingly similar as it incorporates Complainant’s “Coachella Marks”, merely adding the generic or descriptive terms “kid,” “music festival,” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <kidchellamusicfestival.com> domain name. Respondent is not permitted or licensed to use Complainant’s CHELLA trademark and is not commonly known by the disputed domain name. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Instead, Respondent fails to make an active use of the disputed domain name.
Respondent has registered and uses the <kidchellamusicfestival.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which features click-through advertisements to third party websites that compete with Complainant. Additionally, Respondent fails to make an active use of the disputed domain name. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the COACHELLA and CHELLA trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 3,196,119 COACHELLA (word), registered January 9, 2007 for services in class 41;
No. 4,270,482 COACHELLA (word), registered January 8, 2013 for goods in classes 16, 21 and 25;
No. 5,235,905 COACHELLA (word), registered July 4, 2017 for services in class 43;
No. 5,557,242 COACHELLA (word), registered September 4, 2018 for goods in class 14;
No. 3,196,129 COACHELLA (fig), registered January 9, 2007 for services in class 41;
No. 4,266,400 COACHELLA (fig), registered January 1, 2013 for goods in classes 16 and 25;
No. 5,235,903 COACHELLA (fig), registered July 4, 2017 for services in class 43;
No. 3,196,128 COACHELLA VALLEY MUSIC AND ARTS FESTIVAL (word), registered January 9, 2007 for services in class 41;
No. 3,965,563 COACHELLA VALLEY MUSIC & ARTS FESTIVAL (word), registered May 24, 2011 for goods in class 18;
No. 4,008,651 COACHELLA VALLEY MUSIC AND ARTS FESTIVAL (word), registered August 9, 2011 for goods in classes 16 and 25;
No. 5,075,233 CHELLA (word), registered November 1, 2016 for goods in class 25; and
No. 5,520,063 CHELLA (word), registered July 17, 2018 for services in class 41.
Respondent registered the disputed domain name <kidchellamusicfestival.com> on February 13, 2019.
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”).
The Complainant claims rights in the COACHELLA and CHELLA trademarks based upon its registration with the USPTO (e.g., COACHELLA, Reg. No. 3,196,119 registered Jan. 9, 2007, and CHELLA, Reg. No. 5,075,233, registered on Nov. 1, 2016). Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the COACHELLA and CHELLA trademarks per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <kidchellamusicfestival.com> domain name is confusingly similar to Complainant’s “famous Coachella Marks” as Respondent merely adds a modifier and a gTLD to the trademarks. The Panel interprets this as the Complainant referring to both its trademarks COACHELLA and CHELLA.
As to the CHELLA trademark, compared with the disputed domain name <kidchellamusicfestival.com>, the Panel notes that the disputed domain name include the CHELLA trademark, and adding the terms “kid”, “music festival” and a “.com” gTLD. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s trademark does not negate any confusing similarity between a disputed domain name and trademark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.); 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). In this case, the added terms merely indicate that it refers to a new, kid rellated, music festival proovided by the Complainant. The descriptiive added terms in the diisputed domasin name <kidchellamusicfestival.com> does thereby not contain changes that would sufficiently distinguish it from the CHELLA trademark per Policy ¶ 4(a)(i).
As to the COACHELLA trademark, compared to <kidchellamusicfestival.com>, the differences may be more visual. However, the COACHELLA trademark is indeed very well known, which in fact raise the level of protection, and gives the result that also misspellings of the trademark together with addition of generic words that clearly refers to the goods and/or services related to the trademark, is still not enough to sufficiently distinguish the domain name from the Complainant’s trademark. Here, “kidchella” still gives the audience a reference to the COACHELLA trademark, especially as the word “kidchella” is combined with the word “musicfestival”. The Panel therefore concludes that the <kidchellamusicfestival.com> domain name does not contain changes that sufficiently distinguish it from the COACHELLA trademark, per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 <kidchellamusicfestival.com> domain name as Respondent is not authorized to use Complainant’s CHELLA or COACHELLA trademarks and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of evidence in the record to indicate the respondent has been authorized to register a domain name using a complainant’s trademark supports a finding that respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the Registrar identifies the registrant of the disputed domain name as “Richard kutbach” and nothing of the record indicates that Respondent is authorized by Complainant to use the CHELLA and/or COACHELLA trademarks. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use because Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name does constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage which appears to be inactive and displays the message “this web page is parked.” The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <kidchellamusicfestival.com> domain name in bad faith. Specifically, Complainant claims that Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which features click-through advertisements that redirect users to Complainant’s competitors. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant 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)(iii)”). Here, Complainant contends that Respondent intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims that Respondent hosts links to third party websites that compete directly with Complainant’s business to generate click-through advertisement revenue. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage which appears to feature links to third parties. The Panel note that even if it is a so-called “parked” web site, it still contains active links to third parties, and even if those links may have been provided by a third party company that handle the parking service, it is still always the holder of a domain name that is responsible for the use and web sites linked from time to time to the specific domain name. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also asserts that Respondent fails to make an active use and is passively holding the domain name. Failure to make an active use a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”) As noted previously, Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage which appears to be inactive and displays the message “this web page is parked”. Therefore, Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s trademarks. A respondent who registers an infringing domain name with knowledge of complainant’s trademark may be acting in bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous).
Complainant asserts that because the COACHELLA and CHELLA trademarks are so obviously connected with Complainant, and because the subject domain name so clearly references Complainant’s trademarks, Respondent must have been aware of Complainant and its trademarks prior to registering the disputed domain name. The Panel note that the Complainant is based in California, that the famous music festival COACHELLA is based in California, that the Respondent is from California, and finally that the links on the web site connected to the disputed domain name basically refers to the same goods and services as provided by the Complainant, namely links to “Summer Jam Tickets”, “Event Tickets”, “Event Calendar”, “Concert Tickets”, “Event Chairs”, “Festival tickets”, “Summer Festivals”, “Events Tickets”, etc. The Panel thereby agree that Respondent had actual knowledge of Complainant’s rights in the COACHELLA and CHELLA trademarks prior to registering the <kidchellamusicfestival.com> domain name, thereby supporting a finding of bad faith under 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 <kidchellamusicfestival.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 17, 2019
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