Coachella Music Festival, LLC v. julee rios
Claim Number: FA1910001867167
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Julee Rios (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <coachellatours.com>, <onlinecoachella.com>, and <coachellatravelguide.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
PANEL
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.
M. KELLY TILLERY, ESQUIRE as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on October 16, 2019; the Forum received payment on October 16, 2019.
On October 18, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <coachellatours.com>, <onlinecoachella.com>, and <coachellatravelguide.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@coachellatours.com, postmaster@onlinecoachella.com, postmaster@coachellatravelguide.com. Also on October 18, 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.
A timely Response was received and determined to be complete on November 5, 2019.
On November 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
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 owns the exclusive rights to COACHELLA, COACHELLA (stylized), COACHELLA MUSIC FESTIVAL, COACHELLA VALLEY MUSIC AND ARTS FESTIVAL, and CHELLA trademarks and service marks (collectively, “the Coachella Marks”), which Complainant uses in connection with its famous festival and related goods and services.
Respondent, who is in no way affiliated with Complainant, has registered the domain names <coachellatours.com>, <onlinecoachella.com> and <coachellatravelguide.com> used to host commercial parking pages that include sponsored links to items including: “Coachella Tickets,” “Lollapalooza Tickets,” “Concert Tickets,” “Coachella 2019 Lineup,” “Cheap Concert Tickets,” “Bonnaroo Ticket,” and other similar directly competitive links.
Complainant extensively promotes Coachella through a variety of media, including via the Internet, including and on numerous social media sites including Facebook, Twitter, and Instagram, to list a few.
Complainant invested over $1,025,000 dollars in 2018 in media and related content to promote Coachella. Complainant owns multiple registrations, covering a wide variety of goods and services, for its Coachella Marks: United States Service Mark Registration No. 3,196,119 for COACHELLA; United States Trademark Registration No. 4,270,482 for COACHELLA; United States Service Mark Registration No. 5,235,905 for COACHELLA; United States Trademark Registration No. 5,557,242 for COACHELLA; United States Service Mark Registration No. 3,196,129 for COACHELLA (stylized); United States Trademark Registration No. 4,266,400 for COACHELLA (stylized); United States Service Mark Registration No. 5,235,903 for COACHELLA (stylized); United States Service Mark Registration No. 3,196,128 for COACHELLA VALLEY MUSIC AND ARTS FESTIVAL; United States Trademark Registration No. 3,965,563 for COACHELLA VALLEY MUSIC AND ARTS FESTIVAL; United States Trademark Registration No. 4,008,651 for COACHELLA VALLEY MUSIC AND ARTS FESTIVAL.
Complainant’s rights in each of its Coachella Marks pre-date the registration of the subject domain names by many years. Complainant, through its predecessor-in-interest, began using the Coachella Marks in connection with its Festival in October, 1999.
The subject domain names are confusingly similar to Complainant’s trademarks.
Each of the subject domain names merely combine the entire famous Coachella Marks with a term or phrase that is descriptive of Complainant’s goods and services (i.e., “tours,” “online” and “travel guide”).
Here, the terms and phrase “tours,” “online” and “travel guide” are all closely associated with Complainant’s goods.
Respondent has no rights or legitimate interest in the subject domain names. Respondent is not known by the subject domain names. Complainant has not licensed Respondent to use the Coachella Marks nor does Respondent have any legal relationship with Complainant that would entitle Respondent to use Complainant’s famous Coachella Marks. Respondent has no legitimate reason for using Complainant’s Coachella Marks as the dominant part of the subject domain names.
Respondent’s infringing use of the domain names cannot constitute a bona fide offering of goods and services under the Policy. Screen captures showing Respondent’s use of the subject domain names to host commercial parking pages populated by pay per click advertisements to directly competitive goods and services as those offer by Complainant under its famous Coachella Marks.
Respondent is not commonly known by the subject domain names. Respondent’s name is “Julee Rios” Complainant has not given Respondent permission to use its Coachella Marks. Respondent’s unauthorized use of Complainant’s registered service marks and trademarks supports a lack of rights and legitimate interests in the subject domain names.
Respondent has made a plainly commercial use of the subject domain names. The subject domain names are clearly used to misdirect users to a commercial website. Accordingly, the circumstances described in ¶ 4(c)(iii) of the Policy are not present.
Use of a domain name that is identical or confusingly similar to a complainant’s mark to host a parking page is evidence of bad faith. Respondent’s use of the domain names which are confusingly similar to Complainant’s famous mark to host commercial parking pages supports a finding of bad faith under the Policy. Registration of confusingly similar domain names that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith
B. Respondent
Respondent is 16 years old and does not remember developing any websites. Respondent does not operate any websites.
The domain contains the word “Coachella” the city she grew up in and the city she has lived for her entire life. She admits the word “Coachella” may be similar to the trademark. It was probably during a school project that she acquired domains while attending a web class. She has no interest in launching or using the domains. She has never used the domains.
The domains were NOT acquired in bad faith, the domains were registered for a school project at the school she attended, the domains have never been used, and they were NOT acquired for the purpose of selling, renting. In addition, Respondent DOES NOT have interest in registering the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, or disrupting the Complainant business in anyway shape or form. She does not plan on using the Domains.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that all three of Respondent’s Domain Names are confusingly similar to a trademark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name <onlinecoachella.com>, but has not done so with respect to the Domain Names <coachellatours.com> or <coachellatravelguide.com>.
3) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name <onlinecoachella.com> has been registered and is being used in bad faith, but has not done so with respect to the Domain Names <coachellatours.com> and <coachellatravelguide.com>.
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.
Complainant claims rights in the COACHELLA mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (registration with USPTO sufficient to establish complainant’s rights in HOME DEPOT mark). The Panel holds that Complainant’s registration of the COACHELLA mark is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <coachellatours.com>, <onlinecoachella.com>, and <coachellatravelguide.com> domain names are confusingly similar to the COACHELLA mark, as each incorporates the COACHELLA mark in its entirety, along with a descriptive term (“tours,” “online,” and “travel guide”) and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel therefore finds the <coachellatours.com>, <onlinecoachella.com>, and <coachellatravelguide.com> domain names are confusingly similar to the COACHELLA mark per Policy ¶ 4(a)(i).
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”).
Complainant argues that Respondent has no rights or legitimate interests in the <coachellatours.com>, <onlinecoachella.com>, and <coachellatravelguide.com> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the COACHELLA mark in any way. WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. The pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
The WHOIS information of record identifies the Registrant of the at-issue domain name as “julee rios,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. Respondent does not contend otherwise. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <coachellatours.com>, <onlinecoachella.com>, and <coachellatravelguide.com> domain names.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <coachellatours.com>, <onlinecoachella.com>, and <coachellatravelguide.com> domain names is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the names resolve to websites which are being used to obtain click-through revenue by linking to third-party websites, some of which compete with Complainant’s business. Use of a domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (respondent failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use disputed domain name where resolves to website offering competing hyperlinks). Complainant contends the domain names resolve to a website displaying only pay-per-click links, some of which send users to competitor’s websites.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
First, the <coachellatours.com> Domain Name resolves to a “site” listing several links to sites for bicycling goods/services unrelated to or competitive with any of Complainant’s goods/services. The <coachellatravelguide.com> Domain Name resolves to a “site” listing several links to travel and hotel sites also unrelated to or competitive with Complainant’s goods/services. However, the <onlinecoachella.com> Domain Name does resolve to a “site” listing links to sites for a variety of ticket services for musical concerts, including the Coachella festival and other arguably competing ones.
Second, while there is no direct evidence that Respondent established the “sites” at which these Domain Names resolve and/or benefits in any way from them, as Registrant, she is responsible for them.
Third, “Coachella” is an old, geographic designation that long pre-dates Complainant’s use e.g., City of Coachella, California (Incorporated 1946); Coachella Valley, Coachella Grapefruit, etc.
Complainant’s efforts to prevent others from using the term “Coachella” generally and/or in connection with goods/services wholly unrelated to theirs is misplaced and over reaching. The UDRP process was not meant to and should not be used for such purposes. This 16-year old young lady’s school web project which in no way reflects or suggests affiliation, association or sponsorship with or by Complainant cannot be stopped in this forum.
However, the one Domain Name which resolves to a site listing goods/services which may be related to or competitive with Complainant’s does run afoul of the UDRP Rules and must be transferred.
The Panel therefore determines that Respondent does not have rights or legitimate interests in the <onlinecoachella.com>, but does as to the two others..
Complainant also contends that Respondent’s bad faith is indicated by its use of the <coachellatours.com>, <onlinecoachella.com>, and <coachellatravelguide.com> domain names to resolve to parked websites and redirect users to third party websites via pay-per-click links, some of which compete with Complainant’s business. Use of a domain name to resolve to a page of third-party links, including competitive links, can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends the domain names resolve to webpages displaying links to third party websites, some of which belong to competitors of Complainant. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iv), as to <onlinecoachella.com> only, not the two others.
Respondent makes no cognizable arguments with regards to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to the Domain Name <onlinecoachella.com>.
Accordingly, it is Ordered that the <onlinecoachella.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Having not established all three elements required under the ICANN Policy as to the Domain Names <coachellatours.com> and <coachellatravelguide.com>, the Panel concludes that relief shall be DENIED as to these two Domain Names.
Accordingly, it is ORDERED that the <coachellatours.com> and <coachellatravelguide.com> Domain Names REMAIN with the Respondent.
M. KELLY TILLERY, ESQUIRE, Panelist
November 22, 2019
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