DECISION

 

Coachella Music Festival, LLC v. Moh Ali

 

Claim Number: FA1606001680752

 

PARTIES

Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA.  Respondent is Moh Ali (“Respondent”), Sri Lanka.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <coachella.top> and <coachellavip.win> (‘the Domain Names’)  registered with NameCheap, Inc.

 

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.

 

Dawn Osborne of Palmer Biggs Legal as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 22, 2016; the Forum received payment on June 22, 2016 .

 

 

 

On June 24, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <coachella.top> and <coachellavip.win> Domain Names  are registered with NameCheap, Inc. and that Respondent is the current registrant of the names.  NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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.top, and postmaster@coachellavip.win.  Also on June 28, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 25, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

A. Complainant

Complainant owns and produces the famous Coachella Valley Music and Arts Festival. It owns, inter alia the trade mark COACHELLA in the USA for organizing and producing musical events and uses that mark in connection with its festival, first use in commerce recorded as 1999.  It has a web site at www.coachella.com. 

 

The Domain Name <coachella.top> is identical to the COACHELLA trade mark for the purposes of the Policy and coachellavip.win features the entire COACHELLA trade mark as the dominant portion of the domain name with the generic term ‘vip’ added. The Domain Names plainly misappropriate sufficient textual components from the famous COACHELLA marks that an ordinary Internet user familiar with the Complainant’s festival would upon seeing any of the Domain Names likely think that an affiliation exists between the site at the Domain Names and the Complainant or its festival. Further the addition of terms which are related to the Complainant or its services supports a finding of confusing similarity. The Complainant sells a VIP pass to its festival. The addition of a gTLD to the subject domain names is irrelevant to the confusing similarity analysis. 

 

Respondent has no rights or legitimate interests in the Domain Names. Respondent is not known by Complainant’s COACHELLA mark. Complainant has not licensed the Respondent to use its COACHELLA mark. When a domain name is used to offer competing goods to those offered under a Complainant’s mark such use is not a bona fide offering of goods and services. 

 

Respondent uses the Domain Names to redirect users to Respondent’s commercial web site which prominently displays each of the registered COACHELLA marks including in its stylized font and uses an image of the Complainant’s festival. Respondent’s web site also purports to directly offer tickets to events competing with the Complainant's events which is unlawful. The use is commercial so it cannot be non-commercial fair use. 

 

The registration and commercial use of a domain name to redirect Internet users to a web site which offers goods in direct competition to complainant’s goods and services evidences bad faith registration and use under the Policy under ¶ 4(b)(iv) of the Policy. It is also disruptive under 4(b)(iii) of the Policy. Registration of a confusingly similar domain name that is obviously connected with a particular trade mark owner by someone with no connection with the trade mark owner suggests bad faith. 

 

The Domain Names were registered with actual knowledge of the Complainant’s rights in the COACHELLA marks as evidenced by Respondent’s explicit use of the COACHELLA marks in the Domain Names and its web site including the use of the Complainant’s stylized font. 

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns and produces the famous Coachella Valley Music and Arts Festival It owns, inter alia the trade mark COACHELLA in the USA for organising and producing musical events and uses that mark in connection with its festival, first use in commerce recorded as 1999.  It has a web site at www.coachella.com. 

 

The Domain Names were registered in 2016. They have been used on a web site which uses the Complainant’s logo to offer tickets competing with the Complainant’s concert tickets. 

 

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 a domain name should be cancelled or transferred:

 

the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

 

Respondent has no rights or legitimate interests in respect of the domain name; and

 

the domain name has been registered and is being used in bad faith.

 

 

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical or Confusingly Similar 

 

The <coachella.top> domain name consists of the Complainant's COACHELLA mark (which is registered in USA for entertainment services, namely musical events and has been used since 1999) and the gTLD “.top.” The <coachellavip.win> domain name consists of the Complainant’s registered COACHELLA mark and the generic term ‘vip’ commonly used to designate extra privileges with regard to concert tickets from its original meaning ‘very important person’. The Complainant offers a VIP pass to its events. Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by the Complainant). The Panel agrees that the addition of the generic term ‘vip’  to the Complainant's mark does not distinguish the <coachellavip.win> domain name from the Complainant's trade mark pursuant to the Policy. In fact it may add to confusion as the Complainant offers a VIP pass.

 

 

 

The gTLDs .top and .win do not serve to distinguish the Domain Names from the COACHELLA mark, which is the distinctive component of the Domain Names. See Red Hat Inc v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark). 

 

Accordingly, the Panel holds that the <coachella.top> domain name is identical to and the <coachellavip.win> domain name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights. 

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied. 

 

Rights or Legitimate Interests

 

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. The Complainant contends that the site is set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights. 

 

The web site attached to the Domain Names uses the Complainant's word and logo trade mark COACHELLA in a prominent fashion. The Respondent has used the site to promote tickets in competition with those of the Complainant.  It does not make it clear that there is no commercial connection with the Complainant.,  The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v. Benjamin, FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services. 

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy. 

 

Registration and Use in Bad Faith

 

Complainant also alleges that the Respondent's use of the sites attached to the Domain Names is commercial and he is using it to make profit by competing with the Complainant in a confusing and disruptive manner. In the opinion of the panelist, the use made of the Domain Names in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it appears to offer tickets under a confusingly similar name after the Complainant had established rights in providing concert tickets under its name. The use of the Complainant's COACHELLA word and logo marks on the Respondent's web site shows that the Respondent is aware of the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use. 

 

 

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iv) and 4(b)(iii).

 

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.top> and <coachellavip.win> domain names be TRANSFERRED from Respondent to Complainant.

 

Dawn Osborne, Panelist

Dated:  August 1, 2016