Future Festivals, LLC v. Denis Beaudoin
Claim Number: FA1703001724061
Complainant is Future Festivals, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Denis Beaudoin (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2017; the Forum received payment on March 28, 2017.
Also on March 28, 2017, Complainant sent to the Forum a Notice of Related Cases concerning the present proceeding and two other proceedings. The Notice provided as follows:
“From: Steele, David J. [mailto:David.Steele@tuckerellis.com]
Sent: Tuesday, March 28, 2017 10:04 AM
To: Michelle S.
Subject: Notice of Related Cases FA1703001724061, FA1703001724063 and
FA1703001724066 (TE No. 014223-126)
Complainants Future Festivals, LLC and Coachella Music Festival, LLC submit this joint Notice of Related Cases to inform the Forum of the relatedness of three newly filed cases.
Specifically, the following three cases are:
Future Festivals, LLC vs. Denis Beaudoin, Case No. FA1703001724061 (filed Mar. 28, 2017) for the domain names deserttripshuttles.com, deserttripshuttle.net, deserttriplimo.com, deserttrip.limo;
Coachella Music Festival, LLC vs. Denis Beaudoin, Case No. FA1703001724063 (filed Mar. 28, 2017) for the domain names
coachella-shuttle.com, coachellatrailerrental.com, coachellatrailerrentals.com; and
Future Festivals, LLC vs. Denis Beaudoin and Denis Beaudoin II, Case No FA1703001724066 (filed Mar. 28, 2017) for the domain names:
stagecoachfest.com, stagecoachfest.net, stage-coach-shuttle.com, stagecoachfestivalshuttle.com, stagecoachtrailerrental.com, stagecoachtrailerrentals.com.
All three cases involve substantially the same or similar facts, are commenced against the same respondent, and call for the determination of the same or substantially related or similar questions of law and fact. As such, and in the interest of judicial economy, Complainants believe that the cases would be suitably heard by the same panel.
Lastly, the Complainants request that this Notice be included with the information provided to the panel.
Should you have any questions, please do not hesitate to contact me.”
On March 29, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> 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 April 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2017 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@deserttripshuttles.com, postmaster@deserttripshuttle.net, postmaster@deserttriplimo.com, and postmaster@deserttrip.limo. Also on April 4, 2017, 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 May 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant produces the Desert Trip music concert, while providing goods and services related to the show’s production. Complainant uses the DESERT TRIP mark in conjunction with its business. Complainant owns common law rights to the DESERT TRIP mark due to extensive use and mass advertising campaigns since the mark’s adoption on May 3, 2016. See Compl., at Attached Exs. F–H. Complainant filed to register the DESERT TRIP mark with the United States Patent and Trademark Office (“USPTO”) on May 2, 2016. Complainant received USPTO registrations for the DESERT TRIP mark beginning on October 25, 2016 (e.g., Reg. Nos. 5,068,784 & 5,068,785). See Compl., at Attached Ex. J. Respondent’s <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> are confusingly similar to Complainant’s DESERT TRIP mark because they incorporate the mark in its entirety, adding the generic terms “shuttle(s)” and “limo,” as well as adding the “.com” and “.limo” generic top level domains (“gTLDs”). Complainant indicates that the generic terms used in the disputed domains are directly related to Complainant’s transportation services.
Respondent does not have rights or legitimate interests in <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use the DESERT TRIP mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domains. Respondent’s <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> resolve to the <deserttripshuttles.com> webpage attempting to pass itself off as Complainant and offering competing transportation services, thereby creating the impression that Respondent is affiliated with Complainant. Compare Compl., at Attached Ex. B, with Compl., at Attached Exs. I & K.
Respondent registered and is using <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> in bad faith. Respondent has not only registered multiple domain names infringing on Complainant’s mark, it has registered other domain names infringing on the rights of other famous marks. See Compl., at Attached Ex. L. The disputed domain names attract internet users for Respondent’s commercial gain. Respondent uses Complainant’s DESERT TRIP mark and associated logos to pass itself off as Complainant, thus preventing Complainant from reflecting the DESERT TRIP mark in a corresponding domain name. Furthermore, Respondent engaged in opportunistic bad faith by registering the domain names the day after the Desert Trip music concert was officially announced. See Compl., at Attached Exs. A & C. Respondent registered <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> with actual knowledge of Complainant and its rights to the DESERT TRIP mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, on April 4, 2017 Respondent sent an email to the Forum which made several submissions about the case and which the Panel will therefore treat as a Response.
The contents of the email is as follows:
“Please do not continue to harass our company or our employees. We consider this email a harassing email. we have notified our legal repetition and they advised us to sue for harassment should you or anyone continue to send threatening emails and letters to our company.
All of our websites clearly state that we are in no way affiliated with Coachella Music Festival, Desert Trip Music Festival, or Stagecoach Music Festival.
“Coachella” is a name of a town that was established long before your music festival existed. You do not own any exclusive rights to the name of a city.
Stagecoach is a descriptive word. Again you do not own the rights to the word “Stagecoach”
We purchased all of our domain names with the proper rights and we use are websites responsibly.
We obtained these websites legally and we will continue to run all these sites legally.
We respectfully request that you drop all claims and harassment against us.
Any further harassment issues will be forwarded to our legal team. “
1. Complainant is a United States company that owns and produces the Desert Trip Concert, along with related goods and services, including transportation services.
2. Complainant filed to register the DESERT TRIP mark with USPTO on May 2, 2016, and it received USPTO registrations for the DESERT TRIP mark beginning on October 25, 2016 (e.g., Reg. Nos. 5,068,784 & 5,068,785). Complainant has established sufficient rights in the registered DESERT TRIP mark dating back to May 2, 2016.
3. Complainant has established common law or unregistered trademark rights to DESERT TRIP from at least May 9, 2016.
4. Respondent registered the <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> domain names on May 10, 2016.
5. Respondent’s <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> domain names resolve to the <deserttripshuttles.com> domain name webpage, infer that Respondent is associated with or an affiliate of Complainant and offer competing and unauthorized transportation services to those of Complainant.
6. The intention of Respondent in registering and using the domain names was to use them to offer unauthorized shuttle and limousine services to and from the Desert Trip Concert under the guise of using Complainant’s trademark.
7. The intention and the result of Respondent’s actions have been to create domain names and a website that give the false impression to potential users that they are domain names and websites that relate to the Desert Trip Concert and to the shuttle and trailer rental services either provided by the organizers of the concert or provided with their imprimatur or approval.
8. The foregoing facts show that Respondent has no right or legitimate interest in the disputed domain names and that Respondent registered and used them in bad faith.
9. In particular, Respondent registered the domain names the day after the Desert Trip Concert was officially announced, showing opportunistic bad faith.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant produces the Desert Trip Concert, providing goods and services related to the show’s production. Complainant uses the DESERT TRIP mark in conjunction with its business. Complainant submits that it filed to register the DESERT TRIP mark with USPTO on May 2, 2016, and it received USPTO registrations for the DESERT TRIP mark beginning on October 25, 2016 (e.g., Reg. Nos. 5,068,784 & 5,068,785). See Compl., at Attached Ex. J. “As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.” Thompson v. Zimmer, FA 190625 (Forum Oct. 27, 2003). Therefore, the Panel finds that Complainant has established sufficient rights in the DESERT TRIP mark dating back to May 2, 2016.
Complainant also submits that it has common law or unregistered
trademark rights to DESERT TRIP from at least May 9, 2016.That issue has already been considered in Coachella Music Festival, LLC and Future Festivals, LLC v. Mary Jane Leonhardi, FA 685020 (Forum 2003) where a distinguished panelist found that Complainant had common law trademark rights in DESERT TRIP and in the course of that decision said:
“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.”
The Panel has examined the issue anew and reaches the same conclusion and therefore finds that Complainant has established its common law trademark rights to DESERT TRIP from May 9, 2016.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s DESERT TRIP mark. Complainant contends that Respondent’s <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> are confusingly similar to the mark because they incorporate the mark in its entirety, adding the generic terms “shuttle(s)” and “limo,” as well as adding the “.com” and in one case the “.limo” gTLDs. Complainant submits that the generic terms used in the disputed domain names are directly related to Complainant’s transportation services for the concert. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See e.g., Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). Moreover, the addition of a generic word describing the type of business in which the complainant is engaged, as in the present case, does not take the disputed domain name out of the realm of confusing similarity as internet users will simply conclude that the domain name relates to Complainant and shuttle or limousine transport services at the concert. The objective observer looking at the domain names and the trademark and comparing the two would assume that the domain names probably related to the Desert Trip concert and to shuttle and trailer rental services either provided by the organisers of the festival or provided with their imprimatur or approval. See e.g., Brown & Bigelow, Inc. v. Rodela, FA 96466 (Forum Mar. 5, 2001). As such, the Panel finds that Respondent’s <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> are confusingly similar to Complainant’s DESERT TRIP mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DESERT TRIP mark and to use it in his domain names adding the generic words “shuttle(s)” and “limo” which describe aspects of Complainant’s business conducted under the trademark, namely transportation to and from the Desert Trip Concert;
(b) Respondent registered the <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> domain names on May 10, 2016;
(c) Respondent’s <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> domain names resolve to the <deserttripshuttles.com> webpage and offer competing transportation services by inference with the approval of Complainant or under its imprimatur;
(d) Complainant submits that Respondent does not have rights or legitimate interests in <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> as Respondent is not commonly known by the disputed domain names. WHOIS information associated with this case identifies Respondent as “Denis Beaudoin.” See Compl., at Attached Ex. A. The respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006). “Given the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). Complainant submits it has not authorized Respondent to use the DESERT TRIP mark in any regard, nor is Respondent affiliated with Complainant. The Panel therefore finds that Respondent is not commonly known by the domain name;
(e) Complainant submits that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain names. Complainant illustrates that the <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> domain names resolve to the <deserttripshuttles.com> webpage, which offers competing transportation services and other information tending to suggest that it has an element of authority or permission from Complainant as the organizer of the concert to offer transportation there and back. Compare Compl., at Attached Ex. B, with Compl., at Attached Exs. I & K. The Panel has examined in particular the website to which the domain names resolve and notes that its title is Shuttle for Desert Trip, that it refers to transport to and from the concert, depicts the concert’s iconic ferris wheel and also carries a “line up” of performers at the concert, all of which give it an air of authority and permission to impart information about the event and implies that Respondent has access to such information. It is obvious that Respondent is not adverse to giving the impression that it is associated in some way with Complainant. It is true that there is a purported disclaimer on the website but the Panel finds that in all the circumstances the visitor is left with the impression that Respondent is involved in the provision of transport for the event and with the knowledge and consent of Complainant. It cannot give rise to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent uses the disputed domain name to present users with a website that has similar content to that found on the official website. See, e.g., Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006). Therefore, the Panel finds that “[i]t is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant.” Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003). Respondent has therefore not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain names.
All of these matters go to make out the prima facie case against Respondent. That being so, the onus then shifts to Respondent to rebut the prima facie case against it.
The Panel is unable to find that Respondent has rebutted that case and finds that Respondent does not have a right or legitimate interest in the disputed domain names.
That is so for the following reasons.
Respondent’s case for rebutting the prima facie case is set out in the email referred to above which, in fairness to Respondent, the Panel is accepting for practical purposes as a Response. The major point made by Respondent in its email is that “All of our websites clearly state that we are in no way affiliated with Coachella Music Festival, Desert Trip Music Festival, or Stagecoach Music Festival.” The Panel is of the view that the disclaimer is not effective to relieve Respondent of liability as it is outweighed by the content of the website, particularly information, not only about transportation, but also about the line-up of entertainers at the concert, references to the concert and the use of the concert’s iconic ferris wheel which give the site an air of authenticity.
The only other arguments raised by Respondent are that he bought the domain names legally and that the challenge made to his entitlement to retain them and use them is a form of harassment. The Panel does not agree. All domain names are purchased subject to standardized contracts to the effect that the purchaser or registrant is not entitled to retain or use them improperly and that they may be transferred away, but only after any case brought against the registrant is proved before an independent panelist. That is all that has happened in the present case and the related proceedings and there is nothing in any of the proceedings to suggest any form of harassment by Complainant or its advisers, who have presented a detailed and persuasive case in a reasonable manner.
Putting all of this information together leads the Panel to the conclusion that Respondent is in breach of Complainant’s DESERT TRIP trademark and is using the trademark in a deceptive manner and to offer competing and unauthorized services to those of Complainant, negating any possibility that the wording of the domain names or the use to which they been put, could give rise to a right or legitimate interest in the domain names. The Panel finds that they do not.
The Panel therefore finds that Respondent has not rebutted the prima facie case against it, that Respondent has no rights or legitimate interest in the disputed domain names and that Complainant has therefore made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and is using <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> in bad faith. Complainant asserts that Respondent has not only registered multiple domain names infringing on Complainant’s mark, it has registered other domain names infringing on the rights of other famous marks. The domain names and trademarks are those that are being considered in the related proceedings of which Complainant has given notice. See Compl., at Attached Ex. L. Where a respondent has registered multiple domain names that correspond to different well-known trademarks, evidence of a pattern exists. See, e.g., Hachette Filipacchi Presse v. Fortune Int'l Dev., FA 96685 (Forum Apr. 6, 2001). Complainant’s submission of WHOIS evidence listing Respondent as the registrant of other domain names incorporating third-party trademarks is sufficient for the Panel to establish that Respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See, e.g., N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003).
Secondly, the Panel recalls that Respondent’s <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> domain names resolve to the <deserttripshuttles.com> website which carries material inferring that Respondent is in some way associated with Complainant, while offering competing goods and services. Compare Compl., at Attached Ex. B, with Compl., at Attached Exs. I & K. Complainant argues that the website to which the disputed domain names resolve attracts internet users for commercial gain that Respondent hopes to earn. Complainant submits that Respondent uses Complainant’s DESERT TRIP mark and associated logos to pass itself off as Complainant, thus preventing Complainant from reflecting the DESERT TRIP mark in a corresponding domain name. A disputed domain name is registered and used in bad faith where the respondent hosts a website that “duplicate[s] Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . ” which would mislead Internet users. Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003). The Panel finds that the material Respondent has included on his website therefore brings the case within Paragraph 4(b)(iv) of the Policy as it gives rise to confusion. Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002).
Thirdly, Complainant maintains that Respondent engaged in opportunistic bad faith by registering the domain names the day after the Desert Trip music concert was officially announced. See Compl., at Attached Exs. A & C. Panels have found “a compelling indication of bad faith” where the respondent registered the disputed domain name following the complainant’s public announcement or press release regarding its company. See Amazon Technologies, Inc. v. harshit dhingaun, FA1505001619696 (Forum June 10, 2015) (holding that the respondent had demonstrated opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the <amazonfashionindia.com> and <amazonindiafashion.com> domain names within days after the announcement of the complainant’s sponsorship of India Fashion Week); Twitch Interactive, Inc. v. Jason Hardwick, FA1501001601323 (Forum Feb. 25, 2015) (finding that the respondent had engaged in opportunistic bad faith pursuant to Policy ¶ 4(a)(iii), where the respondent registered the <twitchtv.net> domain name just two days after the complainant’s launch announcement for TwitchTV (which received widespread news coverage)); 3M Co. v. Jeong, FA 505494 (Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”). Therefore, the Panel finds that Respondent registered and used the domain names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Fourthly, Complainant maintains that Respondent registered the <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> domain names with actual knowledge of Complainant and its rights to the DESERT TRIP mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, panels have concluded that the respondent “must have known about the [c]omplainant’s mark when it registered the subject domain name.” Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002). Therefore, as the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered the <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> domain names, the Panel finds that the domain names were registered and used in bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the DESERT TRIP mark and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has therefore made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deserttripshuttles.com>, <deserttripshuttle.net>, <deserttriplimo.com>, and <deserttrip.limo> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 9, 2017
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