Coachella Music Festival, LLC v. brandon gordon
Claim Number: FA1810001810965
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is brandon gordon (“Respondent”), Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coalchella.com>, registered with FastDomain Inc..
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 9, 2018; the Forum received payment on October 9, 2018.
On October 10, 2018, FastDomain Inc. confirmed by e-mail to the Forum that the <coalchella.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2018 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@coalchella.com. Also on October 11, 2018, 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 November 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Coachella Music Festival, LLC, owns and produces the famous Coachella Valley Music and Arts Festival, the country’s premier music and arts festival. Complainant has rights in the COACHELLA mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,196,119 registered Jan. 9, 2007). Respondent’s <coalchella.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name plus the letter “L” and the generic top-level domain (“gTLD”) “.com”
Respondent lacks rights and legitimate interests in the <coalchella.com> domain name because Respondent is not commonly known by the disputed domain name and is not commonly known by the disputed domain name. Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent operates a parked webpage that contains pay-per-click advertisements.
Respondent registered and uses the <coalchella.com> domain name in bad faith because Respondent operates a parked page. Additionally, Respondent’s domain name is so obviously connected to Complainant that Respondent had actual knowledge of Complainant’s mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <coalchella.com>domain 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.
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.”).
Complainant asserts rights in the COACHELLA mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish complainant’s rights in the mark per Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides copies of it’s registration for the COACHELLA mark with the USPTO (e.g., Reg. No. 3,196,119 registered Jan. 9, 2007). The Panel finds that Complainant has rights in the COACHELLA mark under a Policy ¶ 4(a)(i) analysis.
Complainant asserts that Respondent’s <coalchella.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name plus a single letter and a gTLD. The addition of a single letter and a gTLD to a mark is not sufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’). Here, Respondent includes the entire COACHELLA mark in the disputed domain name plus the letter “L” and the “.com” gTLD. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent lacks rights and legitimate interests in the <coalchella.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the COACHELLA mark in any way. Where a response is lacking, WHOIS information may be used to identify respondent under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark is evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Complainant provides the WHOIS information which identifies the registrant of the disputed domain name as “brandon gordon” and no information of the record indicates that Respondent is authorized to use the COACHELLA mark in any way. The Panel agrees that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent fails to use the disputed domain in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent operates a parked page that contains pay-per-click advertisements. Use of a domain name to host a parked webpage featuring pay-per-click advertisements is not a bona fide offering of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See The Procter & Gamble Company v. Nathan Richardson / MonoFoil USA, FA 1719890 (Forum Apr. 11, 2017) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Complainant provides screenshots of the webpages associated with the disputed domain name which show multiple hyperlinks that are unrelated to Complainant’s business. The Panel finds that Respondent uses the disputed domain name to promote pay-per-click advertisements under a Policy ¶ 4(c)(i) or (iii) analysis and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant contends that Respondent registered and uses the <coalchella.com> domain name in bad faith because Respondent attempts to commercially gain by hosting a parked page that contains click-through advertising. Use of a domain name to host a webpage that contains pay-per-click advertisements is evidence of bad faith under Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). Complainant has submitted screenshots of the webpages associated with the disputed domain name which show multiple hyperlinks that are unrelated to Complainant’s business. Per Policy ¶ 4(b)(iv), the Panel finds that Respondent attempts to commercially gain by hosting a webpage which contains pay-per-click hyperlinks and thus registered and uses the disputed domain name in bad faith.
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name. A respondent who had actual knowledge of complainant’s rights in the mark is acting in bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant argues that it is obviously connected to the COACHELLA mark and submits multiple articles regarding the recognition and success of Complainant’s festival. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name under Policy ¶ 4(a)(iii). From Complainant’s uncontested allegations and evidence, the panel finds Respondent registered and uses the domain name in bad faith.
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <coalchella.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: November 5, 2018
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