Future Festivals, LLC v. John Needham and BigStub, Inc.
Claim Number: FA1608001689121
Complainant is Future Festivals, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is John Needham and BigStub, Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deserttripfestival2016.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically August 12, 2016; the Forum received payment August 12, 2016.
On August 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <deserttripfestival2016.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@deserttripfestival2016.com. Also on August 15, 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 September 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson, here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant has common law rights in the DESERT TRIP mark dating back to its first use on May 3, 2016, when it immediately was used for goods and services related to a music festival. Respondent’s <deserttripfestival2016.com> domain name is confusingly similar to the DESERT TRIP mark because it contains the words of the mark along with only the words “festival,” which describes the services offered by Complainant, “2016,” the current year, and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the <deserttripfestival2016.com> domain name because Respondent has no relationship with Complainant such that it is authorized to use the DESERT TRIP mark and because the available WHOIS information identifies “John Needham / BigStub, Inc.” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website redirects to Respondent’s own website to unlawfully sell tickets to Complainant’s music festival in violation of the ticket licensing agreement.
Respondent uses the <deserttripfestival2016.com> domain name in bad faith because the resolving website redirects to Respondent’s own website to unlawfully sell tickets to Complainant’s music festival in violation of the ticket licensing agreement. Respondent registered the <deserttripfestival2016.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the mark by using the mark in the domain name and because the domain’s registration on the same day as Complainant’s announcement of the DESERT TRIP mark and associated music festival constitutes opportunistic bad faith.
Respondent:
Respondent did not submit a formal Response. The Panel notes that Respondent registered the <deserttripfestival2016.com> domain name May 3, 2016.
Complainant established that it has rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests.
Respondent registered a domain name containing Complainant’s protected mark without consent, permission, or license to do so and Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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:
Complainant claims common law rights in the DESERT TRIP mark dating back to its first use on May 3, 2016. Complainant contends that it announced the DESERT TRIP event and claims rights to the mark due to its associated music festival on May 3, 2016, at which point it immediately began to provide goods and services related to the associated music festival. Complainant provided references to news articles describing its use of the DESERT TRIP mark in Exhibits E and F, along with screenshots of its own use of the mark on the Internet in Exhibits G and H. In addition, Complainant provided information regarding the current status of its filed trademark applications with the United States Patent and Trademark Office for the DESERT TRIP mark in Exhibit I.
Panels have found that a registered trademark is not required to satisfy Policy ¶ 4(a)(i) if a complainant can demonstrate common law rights by establishing secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Evidence such as use of a mark or media and consumer recognition can establish secondary meaning. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”). Accordingly, the Panel finds the evidence sufficient to establish secondary meaning in the DESERT TRIP mark, and finds that Complainant has shown common law rights in the mark.
Complainant alleges that Respondent’s domain name is confusingly similar to the DESERT TRIP mark because it contains the words of the mark along with only the words “festival,” which describes the services offered by Complainant, “2016,” the current year, and the gTLD “.com.” This Panel agrees that Complainant’s characterizations of the additional terms suggest Respondent’s knowledge of Complainant’s event and attempt to opportunistically take advantage of Complainant’s preparations and work to present the festival. Thus the Panel finds the <deserttripfestival2016.com> domain name confusingly similar to the DESERT TRIP mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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), and then the burden of proof shifts to Respondent to show it does have such 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.”).
Complainant contends that Respondent is not commonly known by the <deserttripfestival2016.com> domain name because Respondent has no relationship with Complainant and is not authorized to use the DESERT TRIP mark and because the available WHOIS information identifies “John Needham / BigStub, Inc.” as Registrant. The Panel finds no evidence that suggests that Respondent has rights or legitimate interests in the record, and the Panel finds that Respondent is not commonly known by the <deserttripfestival2016.com> domain name, under a Policy ¶ 4(c)(ii) analysis. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain name, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent fails to use the <deserttripfestival2016.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website redirects Internet users seeking Complainant’s festival information and/or tickets to Respondent’s own website to unlawfully sell tickets to Complainant’s music festival in violation of the ticket licensing agreement. Complainant provided screenshots of the resolving page in Exhibit B, as well as terms used for tickets sold by Complainant, in Exhibit J, to demonstrate that the resale is unauthorized. This Panel finds this evidence sufficient, and finds that Respondent does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant maintains that Respondent uses the <deserttripfestival2016.com> domain name in bad faith because the resolving website redirects to Respondent’s own website to unlawfully sell tickets to Complainant’s music festival in violation of the ticket licensing agreement. Complainant provided screenshots of the resolving page in Exhibit B, as well as terms of use for tickets sold by Complainant, in Exhibit J, to demonstrate that their resale is unauthorized. This Panel also finds this evidence sufficient to support findings that Respondent uses the domain in bad faith according to Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Complainant asserts that Respondent registered the <deserttripfestival2016.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the mark by using the mark in the domain name. This Panel finds this argument sufficient to show Respondent registered the domain name with actual, rather than merely constructive, knowledge, of Complainant’s rights in the mark, and, accordingly, the Panel finds that Respondent registered the <deserttripfestival2016.com> domain name in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Complainant argues that Respondent registered the domain name in bad faith because the domain’s registration on the same day as Complainant’s announcement of the DESERT TRIP mark and associated music festival constitutes opportunistic bad faith. Complainant urges that it announced the mark and associated music festival May 3, 2016, the same day on which Respondent registered the disputed domain name. Complainant refers to Exhibit A to demonstrate the registration date of the domain and Exhibits E-H to demonstrate its date of announcing the DESERT TRIP mark. This Panel finds the timing of registration not only suggestive of targeting Complainant’s mark, it finds Respondent’s registration to be opportunistic bad faith. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered the confusingly similar domain name in bad faith and used it in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deserttripfestival2016.com> domain name be TRANSFERRED from Respondent to Complainant
Hon. Carolyn Marks Johnson, Panelist
Dated: September 28, 2016
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