Future Festivals, LLC v. Denis Beaudoin / Denis Beaudoin II
Claim Number: FA1703001724066
Complainant is Future Festivals, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Denis Beaudoin / Denis Beaudoin II (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stagecoachfestivalshuttle.com> registered with Omnis Network, LLC; and <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com>, registered with GoDaddy.com, 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.
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, 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 28, 2017, Omnis Network, LLC confirmed by e-mail to the Forum that the <stagecoachfestivalshuttle.com> domain name is registered with Omnis Network, LLC and that Respondent is the current registrant of the name. Omnis Network, LLC has verified that Respondent is bound by the Omnis Network, 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 March 29, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> 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 agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with 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@stagecoachfest.com, postmaster@stagecoachfest.net, postmaster@stage-coach-shuttle.com, postmaster@stagecoachfestivalshuttle.com, postmaster@stagecoachtrailerrental.com, and postmaster@stagecoachtrailerrentals.com. 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.
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 part of a Response.
A timely Response was received and determined to be complete on April 24, 2017.
On May 1, 2017, the Forum received an Additional Submission on behalf of Complainant.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant owns and produces the Stagecoach Music Festival, while providing goods and services related to the show’s production, including transportation services. Complainant uses the STAGECOACH mark in conjunction with its business. Complainant owns common law rights to the STAGECOACH mark due to extensive and continuous use since 2007. See Compl., at Attached Exs. B–F. Complainant has created goodwill and strong public association with its STAGECOACH mark. Respondent’s <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> are confusingly similar to Complainant’s STAGECOACH mark because they incorporate the mark in its entirety, adding the generic terms “fest,” “shuttle,” “festival,” and “trailer rental(s),” hyphens, and the “.com” and “.net” generic top level domains (“gTLDs”).
Respondent does not have rights or legitimate interests in <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com>. Respondent is not commonly known by the disputed domain names. Complainant has not authorized Respondent to use the STAGECOACH 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 domain names. Respondent’s <stagecoachfest.com> and <stagecoachfest.net> domain names resolve to another infringing website, also associated with Respondent, <coachella-shuttle.com>, offering competing services to those offered under Complainant’s COACHELLA mark, thereby creating a false impression of affiliation between Respondent and Complainant. See Amend. Compl., at Attached Ex. G; Coachella Music Festival, LLC v. Beudoin, Denis/ Denis Beudoin, Forum FA 1724063 (pending). Respondent’s <stage-coach-shuttle.com> and <stagecoachfestivalshuttle.com> domain names resolve to inactive websites. See Amend. Compl., at Attached Ex. G. Respondent’s <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> resolve to a website unrelated to, but potentially competing with Complainant’s business. See Amend. Compl., at Attached Ex. G.
Respondent registered and is using <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> 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 Amend. Compl., at Attached Ex. H. The disputed domain names attempt to attract internet users to Respondent’s website for commercial gain. Respondent is attempting to pass itself off as Complainant, while selling competing services. Additionally, Respondent is diverting internet users to a website unrelated to Complainant. Respondent registered <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> with actual knowledge of Complainant and its rights to the STAGECOACH mark.
B. Respondent
(i) Email from Respondent.
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 part 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. “
(ii) The Response received on April 24, 2017.
Respondent made the following contentions.
Respondent has provided transportation services and rentals in the vicinity of the Coachella Valley in California for over fifteen years. Respondent is the current owner of <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com>.
Complainant’s stylized mark is a royalty-free font available for the public to use. See Resp., at Attached Ex. J. Respondent has been using this font on its websites since 2012. Complainant only recently applied to register the STAGECOACH mark in this font with the United States Patent and Trademark Office (“USPTO”) (e.g., Ser. No. 86,940,847, filed Mar. 15, 2016). See Resp., at Attached Ex. A.
Complainant’s STAGECOACH mark is a descriptive mark “with a dictionary meaning with is used in connection with products or services directly related to that meaning.” Resp., 5. Complainant’s use of the STAGECOACH mark is not distinctive enough to be registerable. Furthermore, Complainant’s STAGECOACH mark is indicative of types of goods and services offered and are of public domain. Complainant does not have the right to control any domain utilizing the word “stagecoach.” Respondent illustrates that multiple businesses and domain names utilize the word “stagecoach.” See Resp., at Attached Exs. F & G.
Respondent has rights and legitimate interests in <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com>. The domain names are reflective of the transportation goods and services Respondent offers. Respondent has been using the disputed domain names in the course of its business since 2013. As such, Respondent’s business is commonly known by the domain names.
Respondent registered the disputed domain names to promote its business and not in bad faith against Complainant. Respondent has not attempted to disrupt Complainant’s business, nor is there demonstrated confusion between Complainant and Respondent. Respondent posts disclaimers on its webpages citing that it is not connected to or affiliated with Complainant. See Resp., 3.
C. Additional Submissions
Complainant
Complainant made the following additional contentions.
Despite what Respondent says, he continues to use Complainant’s Coachella Mark, Stagecoach Mark, and Desert Trip mark unlawfully, particularly the Desert Trip mark (including the stylized form of the mark); trade dress, and even the copyright protected photograph taken directly from Complainant’s website.
The website available at Coachella-shuttle.com still contains the same exact content complained of, and included in the Complaint:
“…the famous Coachella Mark (including the stylized form of the mark); the famous trade dress (Ferris wheel, a string of balloons across the sky, the silhouette of the hills in the background, palm trees, behind a setting sun), and even the same copyright protected photograph taken directly from Complainant’s website.”
Respondent’s use of the fair use defence is wrong as he is not using the COACHELLA and STAGECOACH marks in a descriptive sense.
The identical or confusingly similar standard used in cybersquatting is different from the likelihood of confusion standard used in trademark.
Complainant’s marks are valid and enforceable under the policy, and Respondent has misstated the appropriate legal standard.
4. Respondent registered <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> domain names with actual knowledge of Complainant and its rights to the STAGECOACH mark.
5. Respondent’s <stagecoachfest.com> and <stagecoachfest.net> domain names resolve to an infringing website, also associated with Respondent, <coachella-shuttle.com>, offering competing transportation services under Complainant’s COACHELLA mark.
6. Respondent’s <stagecoachfestivalshuttle.com> and <stage-coach-shuttle.com> domain names resolve to inactive webpages.
7. Respondent’s <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> domain names divert internet users to the website of High Desert Toy Hauler Rentals, Hesperia, California.
8. 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 website that relate to the Stagecoach Music Festival and to the shuttle and trailer rental services either provided by the organizers of the festival or provided with their imprimatur or approval.
9. Those considerations show that Respondent has no right or legitimate interest in the disputed domain names and that Respondent registered and used them in 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that although WHOIS information identifies the registrants of the domain names as “Denis Beaudoin” and “Denis Beaudoin II,” the registration data is identical with the exception of the addition of “II” to some of the registrations. See Amend. Compl., at Attached Ex. A.
The Panel finds that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. The proceeding may therefore go forward in its present form.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant owns and produces the Stagecoach Music Festival, providing goods and services related to the show’s production, including transportation services. Complainant uses the STAGECOACH mark in conjunction with its business. Complainant submits that it has common law trademark rights to the STAGECOACH mark due to extensive and continuous use since 2007, along with a massive marketing campaign. See Compl., at Attached Exs. B–F. Complainant has created goodwill and strong public association with its STAGECOACH mark. “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.” Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015). Moreover, “[a] common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.” Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Forum Aug. 13, 2007). Therefore, the Panel finds that Complainant has established common law trademark rights in the STAGECOACH mark through consistent and continuous use of the mark, which helps the mark become distinctive and generate “significant goodwill.” Complainant has had those rights since 2007. George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s STAGECOACH mark. Complainant maintains that the <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> domain names are confusingly similar to Complainant’s STAGECOACH mark because they incorporate the mark in its entirety, adding the generic terms “fest,” “shuttle,” “festival,” and “trailer rental(s),” hyphens, and the “.com” and “.net” gTLDs. 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, does not take the disputed domain name out of the realm of confusing similarity. See e.g., Brown & Bigelow, Inc. v. Rodela, FA 96466 (Forum Mar. 5, 2001). 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 Stagecoach Music Festival and to shuttle and trailer rental services either provided by the organizers of the festival or provided with their imprimatur or approval. As such, the Panel finds that Respondent’s <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> domain names are confusingly similar to Complainant’s STAGECOACH mark.
While Respondent argues that its registration of the <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> domain names predates Complainant’s alleged rights in the mark, the Panel may find that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
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 STAGECOACH mark and to use it in its domain names adding the generic words “fest,” “shuttle,” “festival,” and “trailer rental(s),” which simply convey to the objective observer that the domain names probably related to the Stagecoach Music Festival and to shuttle and trailer rental services either provided by the organizers of the festival or provided with their imprimatur or approval ;
(c) Respondent’s <stagecoachfest.com> and <stagecoachfest.net> domain names resolve to another infringing website, also associated with Complainant, <coachella-shuttle.com>, offering competing services under Complainant’s COACHELLA mark;
(d) Respondent’s <stage-coach-shuttle.com> and <stagecoachfestivalshuttle.com> resolve to inactive websites.
(e) Respondent’s <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> resolve to a website unrelated to, but potentially in competition with Complainant’s business;
(f) Respondent has engaged in these activities without the consent or approval of Complainant;
(g) Complainant asserts that Respondent does not have rights or legitimate interests in <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> because Respondent is not commonly known by the disputed domain names. WHOIS information associated with this case identifies Respondent as “Denis Beaudoin” for <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com>. See Amend. Compl., at Attached Ex. A. WHOIS information for <stagecoachfest.com> and<stagecoachfest.net> identifies Respondent as “Denis Beaudoin II.” Id. 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 [names],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain names] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). Complainant avers it has not authorized Respondent to use the STAGECOACH mark in any regard, nor is Respondent affiliated with Complainant. The Panel has carefully considered Respondent’s argument on this issue but finds that it is clearly the case that Respondent is not commonly known by the domain names, but by his own name;
(h) Complainant argues 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. To support its argument, Complainant demonstrates that Respondent’s <stagecoachfest.com> and <stagecoachfest.net> resolve to another infringing website, also associated with Complainant, <coachella-shuttle.com>, offering competing transportation services under Complainant’s COACHELLA mark. Complainant submits that Respondent is creating a false impression of affiliation between Respondent and Complainant and the Panel agrees. See Amend. Compl., at Attached Ex. G; Coachella Music Festival, LLC v. Beudoin, Denis/ Denis Beudoin, Forum FA 1724063 (pending). “Capitalizing on the well-known marks of [c]omplainant by attracting internet users to its disputed domain names where [r]espondent sells competing products of [c]omplainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010). The Panel concludes that Respondent is not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent uses the domain names names to divert Internet users to a website that offers transportation services that compete with those offered by Complainant under its COACHELLA mark. See, e.g., Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003);
(i) Complainant further demonstrates that Respondent’s <stage-coach-shuttle.com> and <stagecoachfestivalshuttle.com> resolve to inactive websites. See Amend. Compl., at Attached Ex. G. “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute.’” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Moreover, a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)). See e.g., Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005). Therefore, the Panel determines that Respondent’s failure to make an active use of “a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).” Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004);
(j)Complainant demonstrates that Respondent’s <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> resolve to a website unrelated to, but potentially in competition with Complainant’s business. See Amend. Compl., at Attached Ex. G. “Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003). Hence, the Panel finds that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See e.g., U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Forum May 6, 2003).
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.
The Panel notes here that it has carefully considered all of the points made by Respondent and the reasons given in support.
Respondent argues that Complainant’s stylized mark is a royalty-free font available for the public to use. That may be so but it gives the distinctive character to Complainant’s trademark in addition to the word itself and shapes the way in which the word has taken on the status of a common law trademark. Respondent likewise argues that the STAGECOACH mark is not distinctive enough to be registered. That remains to be seen and is clearly the role of the USPTO. What must be remembered, however, is that it is the mark that Complainant has adopted as the mark of its business and one which has obviously obtained some prominence, particularly in the market to which it is likely to appeal and in which it is used. Respondent also argues in effect that the word “stagecoach” itself is a generic or descriptive word which fits uncomfortably with the notion of allowing Complainant any greater control over the way it is used than any other member of the public; the word is generic, but it is clear on the evidence that its primary meaning has taken on a secondary meaning, to the extent that among its likely audience it now means not a horse-drawn vehicle but a music festival and the specific country music festival run by Complainant in California. After all, that is presumably the reason why Respondent has used the name in so many domain names to solicit business and why it has made it very plain that the business it is seeking is transportation to and from the festival to which Complainant has given the name Stagecoach. Basic to Respondent’s argument is that all it has done is devise domain names that simply reflect the business it is conducting and use them in that way. It is however not as simple as that, for Respondent has taken Complainant’s trademark, added services that are clearly competitive to those provided by Complainant and, most importantly, dressed its website in a way such that internet users would assume that the domain names and the website relate to the Stagecoach Music Festival and to the shuttle and trailer rental services either provided by the organisers of the festival or provided with their imprimatur or approval. That is so because two of the domain names resolve to Respondent’s coachella-shuttle.com website which contains, as Complainant puts it, “…the famous Coachella Mark (including the stylized form of the mark); the famous trade dress (Ferris wheel, a string of balloons across the sky, the silhouette of the hills in the background, palm trees, behind a setting sun), and even the same copyright protected photograph taken directly from Complainant’s website.” The website is of course not the same as Complainant’s own site for Coachella or Stagecoach, but the Panel has no doubt that the intention and the result have both been to create domain names and a website that give the impression to potential users that they both related to the Stagecoach Music Festival and to the shuttle and trailer rental services either provided by the organizers of the festival or provided with their imprimatur or approval. To put it even more bluntly, Respondent is using Complainant’s trademark and décor to promote its own business and that of A Touch of Class Limousine.
Other aspects of these disputes are dealt with in the Panel’s decisions in the other related proceedings concerned with Coachella and Desert Trip.
The Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus 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 <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> in bad faith because Respondent has not only registered multiple domain names infringing on Complainant’s mark, but it has registered other domain names infringing on the rights of other famous marks. See Amend. Compl., at Attached Ex. H. In the present case, the other domain names are those arising in the disputes concerning Coachella and Desert Trip.
Where the 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 find, as it does, 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). Furthermore, Respondent is engaged in other UDRP cases with Complainant, further evincing bad faith registration. See Future Festivals, LLC v. Denis Beaudoin, Forum FA 1724061 (pending); Coachella Music Festival, LLC v. Beaudoin, Denis / Denis Beaudoin, Forum FA 1724063 (pending). The Panel finds that “Respondent’s implication in a pattern of bad faith use and registration serves as evidence of Policy ¶ 4(b)(ii) bad faith use and registration in the instant proceeding as well.” Greektown Casino, LLC v. Daniel Kirchhof c/o Unister GmbH, FA1308001513182 (Forum Sept. 17, 2013).
Secondly, it should be noted again that Respondent’s <stagecoachfest.com> and <stagecoachfest.net> domain names direct users to <coachella-shuttle.com> which offers competing transportation services to those offered by Complainant as part of its operation of the music festival. See Amend. Compl., at Attached Ex. G. Complainant argues that the disputed domain names attempt to attract internet users to Respondent’s website for commercial gain and that Respondent is attempting to pass itself off as Complainant by using the STAGECOACH mark and Complainant’s other associated logos to sell its services. The 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 . . . to perpetrate a fraud” among internet users. Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003). In the present case Respondent has used Complainant’s trademark and got its Coachella website dressed up in a way such that internet users would assume that the domain names and the website relate to the Stagecoach Music Festival and to the shuttle and trailer rental services either provided by the organizers of the festival or provided with their imprimatur or approval, which is of course untrue and must have been known to Respondent to be untrue. These considerations show that the domain names were registered and used in bad faith.
Thirdly, Respondent’s <stagecoachfestivalshuttle.com> and <stage-coach-shuttle.com> domain names resolve to inactive webpages, further evincing bad faith registration. See Amend. Compl., at Attached Ex. G. “Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015). Therefore, the Panel finds that “[u]nder the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).” Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014).
Fifthly, Complainant maintains that Respondent registered <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> domain names with actual knowledge of Complainant and its rights to the STAGECOACH 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 STAGECOACH mark when it registered <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com>, the Panel finds that this was done 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 STAGECOACH 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 thus 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 <stagecoachfest.com>, <stagecoachfest.net>, <stage-coach-shuttle.com>, <stagecoachfestivalshuttle.com>, <stagecoachtrailerrental.com>, and <stagecoachtrailerrentals.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: May 9, 2017
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