Coachella Music Festival, LLC v. Michael Gonzalez
Claim Number: FA2306002050418
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Michael Gonzalez (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <limoservicecoachella.com> and <coachellacarservice.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on June 23, 2023; Forum received payment on June 23, 2023.
On June 26, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <limoservicecoachella.com> and <coachellacarservice.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 29, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 2023 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@limoservicecoachella.com, postmaster@coachellacarservice.com. Also on June 29, 2023, 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 19, 2023.
On July 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in COACHELLA. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
The Response, albeit timely, makes no submissions which relate in any direct way to the Policy and the decision which follows is not dependent on the Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant is the promotor of an annual arts and music festival held in the Coachella Valley in California since 1999;
2. Complainant owns, inter alia, United States Patent & Trademark (“USPTO”) Reg. No. 3,196,119, registered January 9, 2007 for COACHELLA; and
3. the disputed domain names were both registered on January 31, 2014 and resolve to a website promoting a bus and limousine service out of the town of Coachella.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of COACHELLA with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain names with the trademark, the gTLD, “.com”, can be disregarded, as can the laudatory phrases “limo service” and “car service”, neither of which has value in distinguishing the domain names from the trademark. The Panel finds the domain names confusingly similar to the trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) finding that “[w]here a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
In consequence of these proceedings, the Registrar disclosed the name of the holder of the domain names as that of Michael Gonzalez (Respondent). There is no evidence that Respondent has any trademark rights of its own and Complainant states that there is no association between the parties. There is nothing to contradict that claim.
Respondent’s own name does not support any finding that he might be commonly known by the disputed domain names. Nor does the Response provide any evidence of use of the names. That said, Complainant’s evidence is that the <coachellacarservice.com> domain redirects to <limoservicecoachella.com> and includes screenshots of the website resolving from that domain name.
What that evidence shows is a mature site setting out in some detail the shuttle bus and limousine services of a business located in the town of Coachella, California. The business provides transportation services to many airports and promotes special event hire and other car and bus hire services.
The Complaint states, variously, that:
“an ordinary Internet user familiar with Complainant’s festival would, upon seeing the domain name[s], likely think that an affiliation exists between the site identified by the domain name[s] and Complainant or its Coachella festival.”
“Respondent has no legitimate reason for using [the trademark] as the dominant part of the subject domain names.”
“Complainant uses the [trademark] in connection with transportation services by partnering with authorized shuttle services and limo services.”
“Respondent uses [the domain names] to misdirect consumers looking for Complainant’s music festival and Complainant to Respondent’s commercial website, featuring directly competitive transportation services.”
“Respondent’s website imitates Complainant’s own website and uses Complainant’s (stylized) mark and copyright-protected graphics and photographs.”
The Panel does not find any of those claims to be adequately supported. Instead, it finds that a reasonable conclusion can be drawn that Respondent is making fair use of the domain names, without intent for commercial gain to mislead the public.
This is not a case like Coachella Music Festival, LLC v. Sampson, Matthew, FA 660086 (Forum Mar. 8, 2016) where the respondent was using <coachella-weekend2frontgatetickets.com> to sell tickets to Complainant’s annual festival. Nor is it even akin to Coachella Music Festival, LLC v. Nikita Balint, FA1906001848084 (Forum July 25, 2019) involving <lovecoahella.com> where this Panel ordered transfer, not because of the nature of the use of that domain name, but because – unlike, for example, “love New York” – it can be reasoned that the town of Coachella with a 2020 population of 42,000 is now best known for its festival, and the at-issue domain name was more likely than not to be seen as a reference to the festival.
Here, the domain names were registered in 2014. The resolving website shows all the hallmarks of an actual business standing behind Respondent. That business runs out of a town that, albeit small, has a casino and other prominent businesses, and seemingly all the local service providers one might expect. The domain names are entirely descriptive of the services offered thereunder.
The Panel finds that Respondent’s use is fair and nominative and does not require Complainant’s consent or approval. The Panel does not accept Complainant’s assertion that Internet users familiar with Complainant’s festival would think that an affiliation exists between the parties.
Further, it finds Complainant’s submission that it uses the trademark in connection with transportation services spurious since what the evidence shows is nothing more than third parties such as Valley Music Travel, Any Line Shuttle, and Cardiff Limousine and Transportation, using their own names to provide transportation to and from the festival venue.
Finally, all that might be further observed of the resolving website is that it prominently refers to the festival as one of the special events to which the business can ferry passengers. There are no “directly competitive transportation services” which offend Complainant’s rights and the allegation that the resolving website imitates Complainant’s website is patently overstated. To the extent that the resolving site uses festival crowd shots, there is no proof of copyright ownership in those images resting with Complainant or anyone else.
Complainant has failed to make a prima facie case that Respondent has no rights or interests in the domain names and has so failed to establish the second limb of the Policy.
No findings required (see, by analogy, Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <limoservicecoachella.com> and <coachellacarservice.com> domain names REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: July 25, 2023
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