DECISION

 

Coachella Music Festival, LLC v. Tim Householder

Claim Number: FA2402002086077

 

PARTIES

Complainant is Coachella Music Festival, LLC ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Tim Householder ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <coachella.rentals>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 28, 2024; Forum received payment on February 28, 2024.

 

On February 28, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <coachella.rentals> 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 March 5, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2024 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.rentals. Also on March 5, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 26, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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 disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the COACHELLA mark established by its ownership of the portfolio of registrations described below and extensive use of the mark in connection with the sale of goods and provision of services related to its music festival.

 

Complainant submits that it commenced using the mark in relation to the music festival in 1999, which drew 25,000 attendees the first year. It has grown to an event with festival grounds, on-sight camping, parking and support operations, that encompasses over 800 acres, and currently, attendance at Coachella, aggregated over the multi-day festival, totals nearly 750,000 attendees per year. 

 

Importantly, in addition to the music, Complainant offers hotel accommodation services through its partners, as well rentals on its own festival grounds. The rental options at the festival grounds include Safari Tents, Safari Cabanas, and the Resort at Coachella. In addition, a variety of hotel packages are offered under the COACHELLA mark.

 

Referring to screen captures of the website to which the disputed domain name resolves, which are exhibited in and attached to the Complaint, Complainant further submits that its website available at <coachella.com> has received 16 million page views and hosted over 6 million users in over 10 million sessions between January 1, 2022 and May 1, 2022.

 

Additionally, Complainant claims an extensive goodwill in the COACHELLA mark arising from its social media accounts with huge numbers of subscribers and followers: Complainant's YouTube account has over 2.4 million subscribers; its Facebook page has over 2.4 million followers; its Twitter account has over 1 million followers; its Instagram account has over 2.4 million followers; and its TikTok has over 239,000 followers.

 

Complainant alleges that the disputed domain name, <coachella.rentals>, is identical to Complainant's COACHELLA mark, arguing that the addition of the generic Top-Level Domain ("gTLD"), name is irrelevant to the confusingly similar analysis under the Policy.

 

Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that

·       Respondent is not known by the disputed domain name;

·       Complainant has not licensed Respondent to use the COACHELLA marks;

·       Respondent has no legal relationship with Complainant that would entitle Respondent to use Complainant's COACHELLA marks;

·       Respondent has no legitimate reason for using Complainant's COACHELLA marks as the dominant part of the disputed domain name;

·       panels established under the Policy, have consistently held that using a domain name at issue to infringe Complainant's trademarks in an attempt to mislead the public is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy, citing Coachella Music Festival, LLC v. Beaudoin, Denis / Denis Beaudoin, Forum Claim FA1703001724063 (use of coachella-shuttle.com that shows "a breach of Complainant's trademarks and an attempt to mislead the public" is not bona fide offering of services);

·       as can be seen in the screen capture of the website to which the disputed domain name resolves, Respondent is using the disputed domain name to infringe Complainant's COACHELLA registered trademark and service mark and its stylized COACHELLA logo, as well as a copyrighted image form Complainant's 2018 website in an attempt to impersonate the Complainant or to attract for commercial gain Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's mark and trade dress;

·       such use is not a not a bona fide offering of services under the Policy. See Hewlett-Packard Development Company, L.P. v. Navamani Mathavadian Selvaraj, Forum Claim FA696174 (Forum Nov. 2, 2016) (finding that "competitive and imitating use by a respondent constitutes 'passing off' and provides no evidence of rights and legitimate interests");

·       because Complainant has not given Respondent permission to use its COACHELLA marks, Respondent's unauthorized use of Complainant's registered service marks and trademarks supports a lack of rights and legitimate interests in the subject domain name, see Solstice Marketing Corp. v. Marc Salkovitz d/b/a Image Media, LLC, Forum Claim FA 040087 (Forum Aug. 31, 2007) (respondent was not commonly known by the disputed domain name because, in part, respondent lacked authorization to use complainant's registered service mark);

·       for the above reasons Complainant is not making a legitimate noncommercial or fair use of the disputed domain name.

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that it is well settled that the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner evidences bad faith. See Household Int'l, Inc. v. Cyntom Enters., Forum Claim FA 95784 (Forum Nov. 7, 2000) (inferring that the respondent registered a well-known business name with hopes of attracting the complainant's customers).

 

In this case the COACHELLA mark is so obviously connected with Complainant, and is being used by Respondent, who has no connection with Complainant.

 

Panels have consistently held that using a domain name that is confusingly similar to a competitor's mark to sell competitive or related goods or services is evidence of bad faith. See Coachella Music Festival, LLC v. Beaudoin, Denis / Denis Beaudoin, supra (finding that respondent's coachella-shuttle.com and the resulting website "attempts to suggest that they are domain names and a website that relate to the Coachella Music Festival and to the shuttle and trailer rental services either provided by the organizers of the festival or provided with their imprimatur or approval" and finding bad faith under the Policy).

 

Here, Complainant offers hotel accommodation services as well as rental accommodations on its festival grounds, and as shown in the exhibited screen capture of the website to which the disputed domain name resolves, Respondent is offering directly competitive services, which Respondent markets under Complainant's stylized logo and at a confusingly similar domain name in an attempt to create a likelihood of confusion or suggest affiliation or sponsorship by Complainant.

 

Complainant adds that panels established under the Policy have uniformly held that passing off is evidence of bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, Forum Claim FA 105890 (Forum May 31, 2002) (finding that respondent's "using the domain name at issue to resolve to a website at which complainant's trademarks and logos are prominently displayed. . . with full knowledge of complainant's business and trademarks" is evidence of bad faith).

 

Additionally, Complainant, refers to a chain of emails exchanged between its representative and Respondent that included a cease-and-desist demand that is exhibited in an annex to the Complaint.

 

Complainant submits that in the exhibited email chain, Respondent representing on March 5, 2022 that he would stop infringing activity but has not taken any action in response to Complainant's demands, and has not responded to further cease-and-desist letters and which further supports a finding of bath faith. See Jaguar Land Rover Limited v. Linares Munoz Daniel Enrique, Forum Claim FA1606001680852 (Forum August 3, 2016) (finding bad faith where "Complainant provides evidence that Respondent responded to the cease and desist letter; Complainant argues, however, that Respondent refused to comply with the letter's demands.").

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the owner of the Coachella music festival and holds a large portfolio of trademark registrations for the COACHELLA mark for which has provided registration certificates, including

·       United States registered service mark COACHELLA registration number 3,196,119, registered on the Principal Register on January 9, 2007 for services in international class 41;

·       United States registered trademark COACHELLA registration number 4,270,482 registered on the Principal Register on January 8, 2013, for goods in international classes 16, 21, and 25;

·       United States registered service mark COACHELLA registration number 5,235,905, registered on the Principal Register on July 4, 2017 for services in international class 43.

 

Complainant has an established Internet presence and maintains its primary website at <coachella.com> and has active social media accounts with large numbers of followers and subscribers as described below.

 

The disputed domain name was registered on May 28, 2014, and updated on July 12, 2023 and resolves to a website that purports to offer holiday rental accommodation at or near the festival.

 

There is no information available about Respondent except for that provided in the Complaint as Amended, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name.

 

The Registrar has disclosed that Respondent, whose identity was concealed on the published WhoIs by means of a privacy service, is the registrant of the disputed domain name.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has provided uncontested evidence of its rights in the COACHELLA mark established by its ownership of the portfolio of service mark registrations described above and the extensive goodwill that it has established by use of the mark in its enormously successful festival that attracts three quarters of a million people each year.

 

The disputed domain name <coachella.rentals> is identical to Complainant's registered trademark and service mark.

 

The gTLD extension <.rentals> would be considered by Internet users as a necessary technical requirement for an Internet domain name and therefore does not prevent a finding of that the disputed domain name is identical to Complainants' marks.

 

This Panel finds therefore that in each case the disputed domain name is confusingly similar to the COACHELLA mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In its Complaint, Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain names as set out in Complainant's detailed submissions above.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The disputed domain name was registered on May 28, 2014, and updated on July 12, 2023 and resolves to a website.

 

At the time the COACHELLA service mark was registered Complainant's music festival had already secured an established reputation. The initial festival in 1999, drew 25,000 attendees, and grew to 750,000 attendees each year. Complainant's registered service mark rights in the United States date back to January 9, 2007.

 

So, by the time the disputed domain name was registered in May 2014, on the balance of probabilities the registrant was aware of Complainant's festival and the COACHELLA name and mark.

 

This finding is supported by the fact that COACHELLA is a distinctive name and mark, and in combination with the gTLD <.rentals>, the resulting disputed domain name created, is a clear reference to accommodation at Complainant's festival.

 

Therefore, on the balance of probabilities the registrant of the disputed domain name was aware of Complainant, its music festival and eponymous COACHELLA mark.

 

Furthermore, on the balance of probabilities therefore the disputed domain name was chosen and registered in bad faith to take predatory advantage of Complainants' reputation and goodwill in the COACHELLA mark.

 

It need not be assumed that the disputed domain name was registered by the current registrant 10 years ago. Complainant does not explain why it took so long to move against Respondent. It might be assumed that the disputed domain name was inactive until recently. However, it is well established that delay in bringing a complaint does not prevent a complainant from receiving redress under the Policy.

 

The uncontested evidence is that the disputed domain name is currently being used to attract Internet traffic by using the COACHELLA mark; that Respondent has no rights to the COACHELLA mark and has not been given permission by Complainant to use the mark.

 

Furthermore, the uncontested evidence is that in response to a cease-and-desist demand in an email from Complainant, Respondent agreed on March 5, 2022 to discontinue use of the disputed domain name, expressly stating "Sorry about that. Will discontinue use immediately." 

 

There is nothing further in the record until February 13, 2023, when Complainant's Vice President ‐ Assistant General Counsel, wrote again to Respondent, referencing the March 2022 letter and stating that despite having sent Respondent two notifications, and despite receiving Respondent's assurance that he would discontinue use of the disputed domain name, immediately, he had been alerted that the disputed domain name was active and resolving to a website that offered "COACHELLA VACATION RENTALS" and "AVAILABLE HOMES FOR COACHELLA WEEK 1: APRIL 13-17".

 

The evidence shows therefore that Respondent, who is based in California, is using the disputed domain name to attract and capture Internet traffic seeking accommodation at the music festival. Respondent's accommodation services are in direct competition with services offered by Complainant.

 

It follows that the disputed domain name is being used in bad faith, to attract, capture, and misdirect Internet traffic intended for Complainant; that the Internet users deceived by Respondent in this manner would on the balance of probabilities be confused as to the status of Respondent's website, particularly as Respondent is using Complainant's copyright marketing images, without license or consent, to present its services as having an association with those offered by Complainant.

 

This Panel finds therefore, that, on the balance of probabilities, by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's COACHELLA mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and the services offered by Respondent on his website.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) in respect of each of them.

 

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.rentals> domain name be TRANSFERRED from Respondent to Complainant.

 

__________________________________________________

James Bridgeman SC Panelist

Dated: March 28, 2024