DECISION

 

Coachella Music Festival, LLC v. Skyler Cota

Claim Number: FA1606001680309

 

PARTIES

Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA.  Respondent is Skyler Cota (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <coachella.news> (“Domain Name”), registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Robert A. Fashler as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 20, 2016; the Forum received payment on June 20, 2016.

 

On June 21, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <coachella.news> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On June 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@coachella.news.  Also on June 21, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on July 10, 2016.

 

On July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Robert A. Fashler 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

 

A. Complainant

(1)  Complainant and its predecessor in title have been operating the famous multi-day/multi-weekend Coachella Valley Music & Arts Festival (“Festival”) in Indio, California, annually since 1999.

(2)  The Festival is one of the leading music festivals in the United States and the world.

(3)  Since 1999, Complainant and its predecessor in title have been using the following trademarks (“COACHELLA Marks”) in connection with the Festival:

COACHELLA

COACHELLA MUSIC FESTIVAL

COACHELLA VALLEY MUSIC AND ARTS FESTIVAL

and Complainant has common law rights derived from that use.

(4)  Complainant registered the following COACHELLA Marks as service marks with the United States Patent and Trademark Office (“USPTO”) on January 9, 2007 in association with Entertainment, namely, organizing and producing musical events:

 

 

 

(5)  Complainant registered the same marks as trademarks with the USPTO in association with posters and certain articles of merchandise:

 

 

(6)  The Festival is extremely well attended and well known, if not famous. Music is performed live at the Festival location and is streamed by Complainant to the broader public via the Internet.

(7)  Complainant operates a very popular website at <coachella.com> that connects the Festival’s community together. Complainant distributes a mobile app for the Festival.

(8)  Complainant promotes the Festival extensively by various means, including social media. It receives a great deal of press and media coverage.

(9)  Respondent registered the Domain Name on May 3, 2016.

(10)       The Domain Name is not being used actively by Respondent. It is held passively, merely resolving to a placeholder website communicating:

“Website coming soon!
Please check back soon to see if this site is available.”

(11)       The Domain Name is identical to the trademark COACHELLA except for the top-level domain .news.

(12)       Respondent has no rights or legitimate interests in the Domain Name because:

a.    Respondent is not using the Domain Name actively;

b.    Respondent is not commonly known by the Domain Name;

c.    Complainant has not granted Respondent a license permitting him to use the COACHELLA Marks;

d.    Complainant does not have any other legal relationship with Respondent that would entitle Respondent to use the COACHELLA Marks; and

e.    Respondent has no legitimate reason for incorporating COACHELLA as the dominant part of the Domain Name;

(13)       Respondent has registered and is using the Domain Name in bad faith because:

a.    The Domain Name is identical to the COACHELLA Marks;

b.    Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the COACHELLA Marks;

c.    Respondent had constructive knowledge of Complainant’s rights in the COACHELLA Marks by virtue of the registrations noted above;

d.    There is no conceivable use of the Domain Name by Respondent that would be legitimate.

 

B. Respondent

(1)  Respondent submitted a minimal Response. The entire Response is reproduced as follows:

 

I am a Coachella fan and as such have no intention of harming Coachella in any way, shape, or form.

 

I registered this domain in the hopes of creating a non-profit community-driven online portal for people to share news and information about all things Coachella.  As a web developer I was building oachella.news (“the site”) myself as a labor of love.  Given the opportunity to publish the site, every care would have been taken with prominent disclaimers to ensure the site was not to be confused as an official Coachella-sponsored site.  As such, I was not cyber-squatting.  Rather, I was acting in good faith.

 

Having said that, I understand the position of Coachella and how they must vigorously defend their trademarks in the public square.  So I will gladly accept your decision.

(2)  Respondent does not deny any of the specific facts asserted by Complainant and does not dispute any of the evidence tendered by Complainant.

C. Additional Submissions

No additional submissions have been filed.

 

FINDINGS

The Panel finds that Complainant’s evidence, and Respondent’s admissions,  satisfy Complainant’s burden under all three elements of Paragraph 4(a) of the Policy, and orders that the Domain Name be transferred to Complainant.

 

DISCUSSION

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 the Domain Name should be cancelled or transferred:

(1)  the Domain Name registered 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.

 

Identical and/or Confusingly Similar

(1)  Complainant has provided evidence that it holds several service mark and trademark registrations with the USPTO for marks that either consist of the word COACHELLA or feature COACHELLA as their dominant distinctive feature (“COACHELLA Marks”).

(2)  Proving ownership of trademark or service mark registrations is sufficient to satisfy the requirement to prove that Complainant has rights in the registered marks. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant  has rights in the METROPCS mark through its registration with the USPTO).

(3)  Complainant provided evidence that the COACHELLA Marks are distinctive and enjoy common law rights in addition to the registered rights. Respondent’s submission confirms the reputation and distinctiveness of the COACHELLA Marks. Respondent demonstrates prior knowledge of the COACHELLA Marks and expresses admiration for the Festival by stating “I am a fan.”

(4)  Complainant contends that that the Domain Name is, to all intents and purposes, identical with the trademark and service mark COACHELLA. The only difference is the generic top-level domain .news, which is a necessary  functional element. The Panel agrees with Complainant’s contention. See W. Union Holdings, Inc. v. XYZ, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the gTLD “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). 

(5)  Complainant has satisfied its burden in relation to Paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

(1)  Complainant bears the initial burden to make out a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Paragraph 4(a)(ii) of the Policy. By necessity, this burden is light. If Complainant satisfies that light initial burden, then the burden shifts to Respondent to prove that it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP Paragraph 4(a)(ii) of the Policy, at which point the burden shifts to the respondent to show that it does have rights or legitimate interests in the 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.”).

(2)  A complainant may make out a prima facie case that a respondent lacks legitimate rights and interests in a domain name that incorporates the complainant’s trademark by showing that: (a) the respondent is not known by the trademark, and (b) the respondent is not authorized to use the trademark. See: Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006); see also Dunkin’ Brands Group, Inc. et al. v. Giovanni Laporta, FA 1568547 (Forum Aug. 25, 2014).

(3)  Complainant submits that Respondent has not been commonly known by the Domain Name or its dominant element, COACHELLA.  Complainant provides evidence of the relevant WHOIS information for the Domain Name, which identifies Respondent as “Skyler Cota.” Mr Cota’s name bears no resemblance to or relationship with the Domain Name or the trademark COACHELLA.

(4)  Complainant asserts that: (a) Complainant has not licensed Respondent to use the COACHELLA Marks, (b) Complainant has no legal relationship with Respondent that would entitle Respondent to use the COACHELLA Marks, and (c) Respondent has no legitimate reason to use COACHELLA in the Domain Name.

(5)  Respondent does not contest the facts asserted by Complainant and provides no contrary evidence. If anything, Respondent’s evidence confirms Complainant’s contentions. The Panel finds that Complainant has satisfied the initial burden of establishing a prima facie case that Respondent has no rights or legitimate interest in the Domain Name. Accordingly, the burden now shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name under Paragraph 4(c) of the Policy. In contrast to the initial burden on Complainant, Respondent’s burden under paragraph 4(c) of the Policy is not light. Respondent must adduce evidence proving that it has rights or legitimate interests in the Domain Name.

(6)  Respondent has not provided any evidence per se. It barely makes assertions of relevance. The closest that Respondent comes to asserting relevant facts is the following statement:

I registered this domain in the hopes of creating a non-profit community-driven online portal for people to share news and information about all things Coachella.  As a web developer I was building oachella.news (“the site”) myself as a labor of love.

(7)  Paragraph 4(c) of the Policy requires proof, not mere assertion. Also, the assertion “I was building” is ambiguous, particularly when considered in the light of the earlier language that refers to the portal in strictly aspirational terms (i.e. “…in the hopes of…”). Accordingly, that statement falls short of meeting the necessary evidentiary threshold.

(8)  The Panel finds that: (a) Respondent has not provided evidence that he used, or made demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name, in connection with a bona fide offering of goods or services before Respondent received any notice of the dispute, and (b) Respondent cannot receive the benefit of Paragraph 4(c)(i) of the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, paragraph 4(c)(i) requires the 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 the respondent of the dispute). 

(9)  Complainant makes additional arguments and provides additional evidence regarding Paragraphs 4(c)(i), (ii), and (iii) of the Policy. Given the extremely thin Response, the additional arguments and evidence are not needed. However, for the sake of completeness, the Panel will briefly review some additional submissions and evidence.

(10)       Complainant contends that Respondent’s minimal, passive use of the Domain Name does not constitute either a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.  Respondent’s Domain Name resolves to a generic landing page stating, “website coming soon! Please check back soon to see if the site is available.”  Respondent admits that he does not use the Domain Name for an active website or “portal.” The Panel finds that Respondent has failed to prove the facts identified in paragraphs 4(c)(i) and (iii) of the Policy. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either paragraph 4(c)(i) or 4(c)(iii) of the Policy, where it failed to make any active use of the domain name).

(11)       The relevant WHOIS information for the Domain Name identifies Respondent as “Skyler Cota,” which bears no resemblance to or relationship with the Domain Name. Respondent does not assert that it was ever commonly known by any name other than Skyler Cota.  The Panel finds that Respondent has never been commonly known by the Domain Name or the COACHELLA trademark. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Accordingly, Respondent has failed to prove the facts contemplated in paragraph 4(c)(ii) of the Policy.

(12)       The Panel finds that: (a) Respondent lacks rights or legitimate interests in the Domain Name, and (b) Complainant has satisfied its burden under paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

(1)  Complainant makes a passing reference to Subparagraph 4(b)(iv) of the Policy, but makes no submissions in relation to any of the specific categories of bad faith identified in Paragraph 4(b) of the Policy. Rather, Complainant’s arguments relate exclusively to the general statement of bad faith set out in Paragraph 4(a)(iii). That is a legitimate approach. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Paragraph 4 (b) of the Policy only sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).

(2)  Before discussing Complainant’s arguments, it is worth noting that Respondent freely admits: (a) prior knowledge of the Festival and the trademark COACHELLA; (b) prior awareness of the nature of the Festival and admiration for it (“I am a Coachella fan…” ); and (c) the intention to employ the Domain Name for an “online portal about all things Coachella.” Hence, there is no doubt that: (a) Respondent registered and used the Domain Name knowing full well that COACHELLA denotes the Festival, and (b) it intended to use the Domain Name in connection with a website about the Festival.

(3)  Respondent’s only defense to the allegation of bad faith are the bald  assertions that: (a) it had “no intention of harming Coachella in any way, shape, or form,”  (b) “…every care would have been taken with prominent disclaimers to ensure the site was not to be confused as an official Coachella-sponsored site,”  and (c) “I was acting in good faith.”  However, mere assertions of good intentions and good faith are not dispositive.

(4)  The Panel is puzzled by one fact. Respondent expressly acknowledged that Complainant “must vigorously defend their trademarks in the public square.” So, once Respondent received notice that Complainant was doing exactly that in relation to the Domain Name, why did it continue to defend the case at all?  Continuing the case is not entirely consistent with Respondent’s professed intention not to harm Complainant “in any way, shape or form.” However, these questions are just that, questions. They prove nothing. However, they do make it more difficult to draw any meaningful inferences from Respondent’s bare assertions of good faith and pure intentions.

(5)  There is only one piece of relevant objective evidence of Respondent’s conduct and intentions, and that is the placeholder website to which the Domain Name resolves. This is “passive holding.” A number of cases have found passive holding to be evidence of bad faith.  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); Clerical Med Inv. Group Ltd v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding the mere holding of an infringing domain name without active use satisfies the bad faith requirement of the Policy); Pirelli & C. Sp.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding non-use of a confusingly similar domain name for over seven months constituted bad faith registration and use); and Michelin North America, Inc. v. Energie Media Group, FA 1451882 (Forum Aug. 7, 2012) (finding registration and use in bad faith where respondent’s websites were inactive, and there was no evidence the domain names were being used for any other purpose).

(6)   Complainant also alleges that bad faith may be inferred from Respondent having registered the Domain Name with actual knowledge of Complainant’s rights in the COACHELLA Marks as evidenced by Respondent’s explicit use of the COACHELLA  in the Domain Name. See Univision Communications Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name); and see Digi Int’l v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); and see Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9^th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”).

(7)  Given that the COACHELLA Marks were: (a) very well known, if not famous, in the United States of America and other parts of the world long before Respondent registered the Domain Name; (b) before it registered the Domain Name, Respondent was very familiar with the Festival and the COACHELLA Marks, and held them in high esteem; and (c) Respondent holds the Domain Name passively; the Panel concludes that Respondent registered and is using the Domain Name in bad faith and that Complainant has satisfied its burden under Paragraph 4(a)(iii) of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <coachella.news> domain name be TRANSFERRED from Respondent to Complainant.

 

Robert A. Fashler, Panelist

Dated:  27 July 2016