Coachella Music Festival, LLC and Future Festivals, LLC v. Mary Jane Leonhardi
Claim Number: FA1607001685020
Complainant is Coachella Music Festival, LLC and Future Festivals, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Mary Jane Leonhardi (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <deserttripcoachella.com>, <deserttripoldchella.com>, <deserttriptshirts.com>, <deserttripevent.com>, and <desertripconcert.com>, (the ‘Domain Names’) 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.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2016; the Forum received payment on July 22, 2016.
On July 25, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <deserttripcoachella.com>, <deserttripoldchella.com>, <deserttriptshirts.com>, <deserttripevent.com>, and <desertripconcert.com> domain names (‘the Domain Names’) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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 postmaster@deserttripcoachella.com, postmaster@deserttripoldchella.com, postmaster@deserttriptshirts.com, postmaster@deserttripevent.com, and postmaster@desertripconcert.com. Also on July 26, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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.
The Panel issued a procedural order on August 30, 2016 requiring the Complainant to provide evidence that the Complainants are affiliated companies by September 6, 2016. The Complainants submitted a Declaration of Jason Bernstein dated September 6, 2016 in response.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”.
The sworn declaration of Jason Bernstein (Senior Counsel for AEG Live LLC parent company of Goldenvoice LLC (‘Goldenvoice’) dated September 6, 2016 confirmed that Goldenvoice owns 50% of each of the Complainants and produces the Coachella Valley Music and Arts Festival (‘Coachella’) with Coachella Music Festival LLC (one of the Complainants) and the Desert Trip concert (Desert Trip’) with Future Festivals LLC (‘Future’) (the other Complainant). He also explained that a number of the same key individuals are executives and/or members of the management team of AEG Live, Goldenvoice and the Complainants. The Panel also notes some press comment in the evidence submitted by the Complainants as to ownership of the Coachella and the Desert Trip festivals by Goldenvoice. As such the Panel is prepared to hold there is sufficient nexus for the Complainants to bring a joint Complaint and due to common ownership they can claim to have rights to the Domain Names. See Tasty Baking Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec 28, 2003) where the Panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.
Complainant requests that the domain names be transferred from Respondent to Complainants. .
A. Complainant
The Complainants are related companies affiliated as set out in the submissions made regarding the preliminary issue referred to above.
Coachella Music Festival LLC owns and produces the Coachella music festival including, inter alia, the COACHELLA registered trade mark. It owns COACHELLA.com and has been operating its festival through predecessors since 1999.
Future owns and produces Desert Trip including, inter alia, the DESERT TRIP trade mark. It owns deserttrip.com and has sold over 100,000 tickets in connection with its Desert Trip event. It has applications for a registered trade mark.
Respondent who is in no way affiliated with the Complainants or either of their festivals registered the Domain Names on May 12, 2016 mere days after the Complainants announced their Desert Trip festival on May 3, 2016 and sold out its tickets on May 9, 2016. When contacted by Complainants’ attorney Respondent offered to sell the Domain Names for an amount to cover ‘time and monetary investment to date’ explaining it would cost $1500–$4000 in filing fees alone for the Complainants to file a UDRP claim.
Each of the Domain Names are confusingly similar to the Complainants’ trademarks.
<deserttripcoachella.com> is merely a combination of the DESERT TRIP mark and the COACHELLA mark. Panels have held that the combination of two marks owned by a complainant does not allow a respondent to avoid a finding of confusing similarity.
The <deserttripoldchella.com> domain name is a combination of the DESERT TRIP mark and ‘oldchella’. Oldchella is a variant of the mark COACHELLA and Desert Trip has frequently been referred to in the media as ‘Oldchella’ presumably because Desert Trip will feature some of the most well-known performers from the last 60 years and takes place at the same venue as Coachella.
The remaining domain names in this Complaint merely combine the DESERT TRIP mark with goods and services provided in association with the mark. The addition of terms which are related to the Complainants or their services supports a finding of confusing similarity.
Consumers are highly likely to believe the Domain Names are affiliated with the Complainants and their festivals.
The addition of generic gTLDs to the Domain Names is irrelevant to the confusingly similar analysis.
Respondent has no rights or legitimate interest in the Domain Names. Respondent is not commonly known by the Domain Name. Complainant has not licensed Respondent to use its marks and the Respondent has no legal relationship with the Complainant.
Respondent is using the Domain Names to redirect users to pay per click parking pages advertising various goods and services. This is not bona fide or non-commercial or fair use. The Respondent’s use of the Domain Names shows actual knowledge of the Complainants’ marks.
The timing of the Respondent’s registrations and her offering of sale of the Domain Names to the Complainants and the fact that she has no connection with the Complainants’ trademarks are evidence of opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
There were no additional submissions apart from those affecting the preliminary issue referred to above.
The Complainants are related companies.
Coachella Music Festival LLC owns and produces the Coachella music festival including, inter alia, the COACHELLA registered trade mark. It owns COACHELLA.com and has been operating its festival through predecessors since 1999.
Future owns and produces Desert Trip including, inter alia the DESERT TRIP trade mark. It owns deserttrip.com and has sold over 100,000 tickets in connection with its Desert Trip event. It has applications for a registered trade mark.
Respondent is using the Domain Names to redirect users to pay per click parking pages advertising various goods and services.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical and/or Confusingly Similar
Coachella owns and produces the Coachella music festival including, inter alia, the COACHELLA registered trade mark in the United States. It owns coachella.com and has been operating its festival through predecessors since 1999.
Future owns and produces Desert Trip including, inter alia the DESERT TRIP trade mark. It owns deserttrip.com and has sold over 100,000 tickets in connection with its Desert Trip event. It has applications for a registered trade mark. Whilst the use of the DESERT TRIP mark is short lived it is extraordinary in its intensity and the amount of recognition it has achieved. Accordingly the Panelist finds that Future has common law rights in the DESERT TRIP mark.
Deserttripcoachella.com is merely a combination of Future’s DESERT TRIP mark and Coachella’s COACHELLA mark. See Hewlett-Packard Development Company, LP v. Yangxiaoyi/Qingyuan Tianheng Trading Company Limited, FA 1625637 (Forum June 23, 2015).
The <deserttripoldchella.com> domain name is a combination of Future’s DESERT TRIP mark and ‘oldchella’. There is good evidence that Desert Trip has frequently been referred to in the media as ‘Oldchella’ and it appears this may be because Desert Trip features well known established performers from the last 60 years and takes place at the same venue as Coachella.
The remaining domain names in this Complaint combine the DESERT TRIP mark with goods and services provided by Future in association with the mark. The addition of terms which are related to the Complainants or their services supports a finding of confusing similarity. The addition of generic words does not serve to distinguish the Domain Name from Future’s DESERT TRIP mark especially bearing in mind what Future does and the Panelist finds that the Domain Name is confusingly similar to a mark in which the Complainants have rights for the purpose of the Policy. See Vance Int’lInc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding ‘security’ which described the Complainant’s business to the complainant’s VANCE mark the respondent ‘very significantly increased’ the likelihood of confusion with the complainant’s mark).
The addition of a gTLD does not distinguish the Domain Names from the Complainants’ marks. See 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 Policy 4(a)(i) analysis).
Rights or Legitimate Interests
The Respondent is not commonly known by the Domain Names and is not authorized by the Complainants to use their marks. It is clear from the evidence that the Respondent has used the sites attached to the Domain Names to promote goods which are not connected with the Complainants for commercial purposes which is not a non-commercial or fair use.
It is clear from the combination of generic words included in the Domain Names with the Complainants’ marks and the combination of both of the Complainants’ marks in <deserttripcoachella.com> that the Respondent was aware of the significance of the COACHELLA and DESERT TRIP names and the Complainants’ rights at the time of registration. It is also telling that the Domain Names were registered a few days after the Complainants’ Desert Trip festival was announced and they had sold out tickets. The usage of the Complainants’ marks which have a significant reputation in relation to goods and services not connected with the Complainants is not a fair use as the site does not make it clear that there is no commercial connection with the Complainants. As such it cannot amount to a bona fide offering of goods and services. See Royal Bank of Scotland Grp plc et al v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (finding that the operation of a commercial web site displaying various links to third party web sites was not a use in connection with a bona fide offering of goods and services pursuant to Policy 4(c)(iii))
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainants’ trade marks in this way. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainants have satisfied the second limb of the Policy.
Registration and Use in Bad Faith
As determined above, the Respondent’s use of the site is commercial and she is using it to make a profit from products not associated with the Complainants in a confusing manner. The combinations of marks and goods and services in the Domain Names makes it clear the Respondent was aware of the Complainants’ rights at the time of registration and the timing of the registrations days after the Complainants’ announced their Desert Trip tickets and sold out also indicates knowledge on the part of the Respondent. It seems clear that the use of the Complainants’ mark in the Domain Names would cause people to associate the website at the Domain Names with the Complainants and their business, services and goods. Accordingly, the Panelist holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to her website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the web site. See Dovetail Ventures LLC v. Klayton Thorpe FA 1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy 4 (b) (iv) where it used the domain name to host a variety of hyperlinks unrelated to the Complainant’s business for commercial gain).
As such, the Panelist believes that the Complainants have made out their case that the Domain Name was registered and used in bad faith and have satisfied the third limb of the Policy. The Panelist notes that the Respondent also offered to sell the Domain Names to the Complainants but in view of the findings above there is no need to consider further possible grounds demonstrating the Respondent’s 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 <deserttripcoachella.com>, <deserttripoldchella.com>, <deserttriptshirts.com>, <deserttripevent.com>, <desertripconcert.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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