Future Festivals, LLC v. WhoisProtectService.net and PROTECTSERVICE, LTD.
Claim Number: FA1608001689134
Complainant is Future Festivals, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is WhoisProtectService.net and PROTECTSERVICE, LTD. (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deserttripconcerttickets.com>, registered with EvoPlus Ltd.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2016; the Forum received payment on August 13, 2016.
On August 15, 2016, EvoPlus Ltd. confirmed by e-mail to the Forum that the <deserttripconcerttickets.com> domain name is registered with EvoPlus Ltd. and that Respondent is the current registrant of the name. EvoPlus Ltd. has verified that Respondent is bound by the EvoPlus Ltd. 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 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@deserttripconcerttickets.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 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 has common law rights in the DESERT TRIP mark under Policy ¶ 4(a)(i). Complainant has filed for registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Serial No. 87022158), that it has been using to extensively advertise and promote its Desert Trip Music Festival (“Festival”). The DESERT TRIP mark has achieved secondary meaning because Complainant has sold over 100,000 tickets to the Festival, and received wide-spread press and social media coverage featuring the DESERT TRIP mark. Respondent’s domain name merely adds “concert tickets” to Complainant’s fully incorporated mark, which is descriptive of Complainant’s business of selling tickets to the Festival. Additionally, the omission of spaces and a generic top-level domain (“gTLD”) suffix together with the descriptive terms does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent holds no rights or legitimate interests in the disputed domain name. Complainant has not licensed or authorized Respondent to use its DESERT TRIP mark in any fashion, and Respondent is not commonly known by <deserttripconcerttickets.com>. Respondent’s domain name purports to pass itself off as Complainant, and competes with Complainant by illegally offering tickets to the Festival. This does not constitute a bona fide offering of goods and services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent is intentionally creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its domain name, by attempting to pass itself off as Complainant. Respondent’s use of Complainant’s marks all over its website, and attempt to sell tickets to the Festival in direct competition of Complainant is evidence of Respondent’s attempt to commercially gain in bad faith. Further, Respondent had actual notice of Complainant’s mark, due to the use of the DESERT TRIP mark on its website, and registration of the <deserttripconcerttickets.com> domain on the day after Complainant announced the Festival. This conduct is in bad faith under a nonexclusive analysis of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Future Festivals, LLC, owns and produces the Desert Trip Music Festival. The 2016 Desert Trip Music Festival will feature some of the most famous performers from the last 60 years, including The Rolling Stones, Bob Dylan, Paul McCartney, Neil Young, Roger Waters, and The Who.
Information about the Desert Trip Music Festival was first reported in the press in
early April, 2016, and the Festival officially announced on May 3, 2016. Passes to the Festival went on sale on May 9, 2016, and sold out the same day. Even though this is the first time the Desert Trip Music Festival is being held, attendance to the sold out festival is expected to exceed 70,000 people on each of its two weekends.
Respondent, who is in no way affiliated with the Desert Trip Music Festival, registered the <deserttripconcerttickets.com> domain name on May 4, 2016, the day after Complainant announced the Desert Trip Music Festival. Respondent is using the domain name to redirect users to a commercial website which sells tickets to the Festival without authorization and also sells tickets to competitive concerts. Respondent’s website imitates Complainant’s website and uses Complainant’s Desert Trip mark and copyright-protected graphics from Complainant’s website to create the impression that Respondent’s website and the subject domain name are affiliated, sponsored or endorsed by Complainant.
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 that it has rights in the DESERT TRIP mark pursuant to Policy ¶ 4(a)(i). Complainant filed various applications for the mark with the USPTO (e.g., Serial No. 87022158) on May 2, 2016, with an intent to use the marks to promote its newly announced Festival. Panels have uniformly held that merely filing for trademark protection does not confer rights under Policy ¶ 4(a)(i). See ValueVapor LLC v. Vicki Oxman, FA 1542157 (Forum Mar. 20, 2014) (denying Complainant’s rights under Policy ¶ 4(a)(i) as “[t]here is no evidence of a registered trademark and it has long been held that a pending application for registration is not sufficient to prove trademark rights.”). However, the Panel looks to the common law to determine if it has established rights in the DESERT TRIP mark. 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).
Complainant claims that it has common law rights in the DESERT TRIP mark based on its first use of the mark on May 3, 2016. Complainant contends while this is the first year of putting on the Festival, the DESERT TRIP mark has acquired secondary meaning. Complainant began publicizing the event in April 2016, and sold the event out in three hours when tickets went on sale on May 9, 2016. Complainant has used the DESERT TRIP mark extensively in advertising and promoting the Festival on various websites and social media. Because of the tremendous demand for tickets to the performances of such an epic all-star lineup, Complainant easily established secondary meaning in the DESERT TRIP mark, and therefore common law rights, almost immediately upon announcement of the event on May 3, 2016. 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.”).
Respondent’s domain name, <deserttripconcerttickets.com>, is confusingly similar to Complainant’s DESERT TRIP mark under Policy ¶ 4(a)(i). The addition of “concert tickets” to the DESERT TRIP mark is merely descriptive of Complainant’s business of selling to tickets to the Festival. The omission of spaces and the addition of a gTLD suffix does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or authorized Respondent to use its DESERT TRIP mark. Respondent is not commonly known by the <deserttripconcerttickets.com> domain name under Policy ¶ 4(c)(ii). The WHOIS information lists “WhoisProtectService.net” as the registrant with “PROTECTSERVICE, LTD.” as Organization. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”).
Respondent is not using <deserttripconcerttickets.com> to make a bona fide offering of goods and services or to make a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii). Respondent uses the disputed domain name to pass itself off as Complainant and resell tickets to the Festival without authorization. The resolving website features links that directly compete with Complainant. Passing off and competing use by a respondent does not confer rights or legitimate interests in a disputed domain name. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Respondent registered and is using <deserttripconcerttickets.com> in bad faith under Policy ¶ 4(b)(iv). Respondent is using Complainant’s DESERT TRIP mark in its domain name and the resolving website to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website, and thus commercially gain from the confusion. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Respondent’s confusingly similar domain name redirects mistaken Internet users to a website that resells Complainant’s tickets without authorization, which is bad faith under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Respondent had actual notice of Complainant’s rights in the DESERT TRIP mark at the time the <deserttripconcerttickets.com> domain name was registered. Respondent made explicit use of the DESERT TRIP marks on its website to sell tickets to the Festival without authorization. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”). Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent’s timing of the registration for <deserttripconcerttickets.com> shows opportunistic bad faith under Policy ¶ 4(a)(iii). Complainant publicly announced the Festival on May 3, 2016; Respondent registered the disputed domain name on the very next day (May 4, 2016). See Twitch Interactive, Inc. v. Jason Hardwick, FA1501001601323 (Forum Feb. 25, 2015) (finding that the respondent had engaged in opportunistic bad faith pursuant to Policy ¶ 4(a)(iii), where the respondent registered the <twitchtv.net> domain name just two days after the complainant’s launch announcement for TwitchTV (which received widespread news coverage)).
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 <deserttripconcerttickets.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 3, 2016
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