Coachella Music Festival, LLC v. Patrick Shanahan
Claim Number: FA2003001889813
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Patrick Shanahan (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coachellavip.com>, registered with DreamHost, 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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2020; the Forum received payment on March 26, 2020.
On March 30, 2020, DreamHost, LLC confirmed by e-mail to the Forum that the <coachellavip.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 April 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2020 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@coachellavip.com. Also on April 1, 2020, 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 April 20, 2020.
On April 24, 2020 and April 29, 2020 Additional Submissions were received and considered by the Panel.
On April 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner and operator of an annual music festival. Complainant has rights in its COACHELLA mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,196,119, registered Jan. 9, 2007). See Compl. Ex. G. Respondent’s <coachellavip.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “vip” and the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <coachellavip.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely passively holding the disputed domain name.
Respondent registered and used the <coachellavip.com> domain name in bad faith. Specifically, Respondent is inactively holding the disputed domain name. Additionally, the disputed domain name is likely to cause confusion among internet users, and there is no conceivable way for Respondent to use the disputed domain without further infringement of Complainant’s mark.
B. Respondent
Respondent contends the <coachellavip.com> domain name is not confusingly similar as an ordinary Internet user would not be confused. Respondent contends he has legitimate rights and interest in the <coachellavip.com> domain name as Respondent contends the domain name to be a fan site for Complainant’s festival. Respondent contends he has not added content to the domain name as Respondent is busy raising a family and hopes to build the website in the future.
Respondent contends he did not register or use the <coachellavip.com> domain name in bad faith. Respondent contends the <coachellavip.com> domain name is intended to be a fan site, but due to family, Respondent has not been able to add content.
The <coachellavip.com> domain name was registered on May 10, 2007.
C. Additional Submissions
On April 24, 2020 and April 29, 2020 Additional Submissions were provided by Complainant, and Respondent respectively, and were considered by the Panel.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the 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.
Complainant claims rights in the COACHELLA mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,196,119, registered Jan. 9, 2007). See Comply. Ex. G. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Complainant has rights in the COACHELLA mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <coachellavip.com> domain name is confusingly similar to Complainant’s mark as Respondent merely add the descriptive term “vip” and the “.com” gTLD. Adding descriptive words and a gTLD to a complainant’s mark may not be sufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <coachellavip.com> domain name is confusingly similar to Complainant’s mark under 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 <coachellavip.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a 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)”). The WHOIS of record identifies the Respondent as “Patrick Shanahan” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, Respondent has no rights or legitimate interests in the <coachellavip.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <coachellavip.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent inactively holds the disputed domain name. Inactively holding a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which appears to be an empty webpage. See Compl. Ex. H. Therefore, Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and used the <coachellavip.com> domain name in bad faith. Specifically, Respondent is inactively holding the disputed domain name and has no conceivable use that would not infringe on Complainant’s mark. Bad faith can be found when a disputed domain name that infringes on a famous mark and is then left inactive under Policy ¶ 4(a)(iii). See Alitalia –Line Aerie Italian S.p.A v. Color Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). Complainant provides articles demonstrating the fame of the COACHELLA mark. See Compl. Ex. B, C, D, and E. Complainant provides screenshots of the resolving webpage of the <coachellavip.com> domain name which is an empty webpage. See Compl. Ex. H. Therefore, Respondent’s <coachellavip.com> domain name was registered and used in 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 <coachellavip.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
David P. Miranda, Esq., Panelist
Dated: May 7, 2020
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