Coachella Music Festival, LLC v. Titus Watson
Claim Number: FA1610001699866
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Titus Watson (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coachellatees.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 25, 2016; the Forum received payment on October 25, 2016.
On October 26, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coachellatees.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 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2016 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 firstname.lastname@example.org. Also on October 27, 2016, 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 16, 2016.
On November 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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.
Complainant uses the COACHELLA mark in connection with its annual music festival. Complainant supports its claim of ownership over the COACHELLA mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,196,119, registered Jan. 9, 2007). See Compl., at Attached Ex. G. The disputed domain name is confusingly similar to Complainant’s COACHELLA mark under Policy ¶ 4(a)(i) because it incorporates the mark fully and merely adds the generic term “tees” and the “.com” generic top-level domain (“gTLD”). “Tees” is common use for “T-shirt”—Complainant sells apparel (including t-shirts) at its festival in connection with its trademark. See Compl., at Attached Exs. B–G.
Respondent has no rights or legitimate interests in or to <coachellatees.com>. Respondent has not been commonly known by <coachellatees.com>, as Respondent is listed as “Titus Watson.” See Compl., at Attached Ex. A. Next, Respondent has not operated with any bona fide offering of goods or services or with any legitimate noncommercial or fair use because there is in fact no use of the website. See Compl., at Attached Ex. H (displaying, “We’ll Be Back Soon!”).
Respondent registered and used <coachellatees.com> in bad faith. Domain name non-use, as is the case here, represents bad faith registration and use under a nonexclusive consideration of Policy ¶ 4(a)(iii). In addition, Respondent had actual or constructive knowledge of the COACHELLA mark and Complainant’s rights therein.
Respondent intends to use <coachellatees.com> in 2017 to create a website to promote a team of tee ball players. Therefore, the terms of the website correlate to the site’s intended use: “Coach Ella” representing Coach Ellan (or Ellen) Foster, and “tees” representing the tee ballers Ellan (or Ellen) Foster will coach.
Complainant is a very well-known concert organizer and the holder of a series of COACHELLA trademarks and domain names. Complainant’s COACHELLA trademarks are of valuable goodwill associated with the Complainant and its company name.
Respondent, without having Complainant’s license, authorization or consent to do so, registered the domain name under review, that incorporates in full Complainant’s rights on the name COACHELLA, deriving from its trademark, domain name, distinguishing features of origin and company name.
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 uses the COACHELLA mark in connection with its annual music festival. Complainant supports its claim of ownership over the COACHELLA mark through its trademark registrations with the USPTO (e.g., Reg. No. 3,196,119, registered Jan. 9, 2007). Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel accepts the submissions by Complainant in Exhibit G to represent its Policy ¶ 4(a)(i) rights in the COACHELLA mark.
Complainant furthermore asserts that the disputed domain name is confusingly similar to Complainant’s COACHELLA mark under Policy ¶ 4(a)(i) because it incorporates Complainant’s COACHELLA trademark fully and merely adds the generic term “tees” and the “.com” gTLD. “Tees” is a commonly used term for “T-shirts”. Complainant sells apparel (including t-shirts) at its festival in connection with its COACHELLA flagship trademark. Where generic or descriptive terms are added to a fully incorporated mark, along with a gTLD, confusing similarity still exists between the registered trademark and a domain name incorporating the trademark along with a descriptive term, because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the addition of the descriptive or non-distinctive element “tees,” does not alter the dominant, distinctive part of the domain name under review which is the name COACHELLA and, as such, Respondent’s alterations to the COACHELLA mark in creating <coachellatees.com> constitutes confusing similarity under Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant contends that Respondent has no rights or legitimate interests in or to <coachellatees.com>. Complainant argues that Respondent has not been commonly known by <coachellatees.com>, as Respondent is listed as “Titus Watson.” Here, Respondent is Titus Watson, and has alleged that he wants to arrange a website for promoting Coach Ellan Foster and her tee ball team, but admits that he has not been holding the website out to the public with any content, and will not do so until next year. As such, the Panel finds that the evidence points to Respondent not being commonly known by <coachellatees.com> under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent has not operated with any bona fide offering of goods or services or with any legitimate noncommercial or fair use because there is in fact no use of the website, which was displaying the sign: “We’ll Be Back Soon!”. Respondent’s failure to make an active use of domain names for a period of time supports a finding of no rights or legitimate interests on the part of the Respondent, under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). Accordingly, as Respondent appears to have held the disputed domain name without any use since registering it on March 22, 2016, the Panel finds that the nearly eight month period of non-use indicates a lack of rights and legitimate interests based on bona fide use applicable principles.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another.
The question is whether, on the basis of the available facts, Respondent registered and used <coachellatees.com> in bad faith. Domain name non-use and passive holding, may certainly lead to a finding of bad faith registration and use under a nonexclusive consideration of Policy ¶ 4(a)(iii). Complainant has provided evidence of Respondent’s alleged inactive holding at Attached Exhibit H (displaying, “We’ll Be Back Soon!”). Therefore, the Panel holds that Respondent’s inactive holding, also known as “domain name parking” constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
In addition, as a further element of bad faith, the question is whether Respondent had actual knowledge of Complainant’s rights in the COACHELLA trademark. Taking into account the totality of the circumstances, the fact that both Complainant and Respondent are based in the USA where Complainant’s activities and trademarks appear to be quite well-known, based on evidence submitted, this Panel cannot rule out the possibility that Respondent registered the domain name with actual knowledge of Complainant’s trademark rights on the name COACHELLA, thereby violating Policy ¶ 4(a)(iii).
Last but not least this Panel dismisses Respondent’s arguments that the purported use of the domain name under dispute <coachellatees.com> referred to a Coach Ellen Foster as far as the COACHELLA part of the domain name under dispute is concerned, as the foregoing makes no spelling sense. If indeed the intended name to be reflected in the sense the Respondent wanted was Coach Ellen Foster, in that case the domain name registered would have been <coachellentees.com> or <coachellantees.com> instead of the current <coachellatees.com>. The foregoing further support this Panel’s finding that Respondent registered and used the domain name under dispute in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coachellatees.com> domain name be TRANSFERRED from Respondent to Complainant
Eleni Lappa, Panelist
Dated: December 2, 2016
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