DECISION
Coachella Music Festival, LLC v. Dara Russell / Teachella Foundation, Inc.
Claim Number: FA2407002106956
PARTIES
Complainant is Coachella Music Festival, LLC ("Complainant"), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is Dara Russell / Teachella Foundation, Inc. ("Respondent"), represented by Roman Aguilera III of The Aguilera Law Firm PLLC, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <teachella.net> and <teachella.org>, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on July 18, 2024; Forum received payment on July 18, 2024.
On July 18, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <teachella.net> and <teachella.org> 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 July 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@teachella.net and postmaster@teachella.org. Also on July 22, 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.
A timely Response was received and determined to be complete on August 12, 2024.
On August 13, 2024, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Carol Stoner, Esq., 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.
RELIEF SOUGHT
Complainant requests that the domain names <teachella.net> and <teachella.org> be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant Coachella Music Festival, LLC ("Complainant") claims that it owns and produces the famous Coachella Valley Music and Arts Festival ("Coachella") and the related community CHELLA concert ("Chella") – the country's premier music and arts festival held in Indio, California. Complainant owns the exclusive rights to trademarks and service marks associated with Coachella, including CHELLA, COACHELLA, COACHELLA (stylized), and COACHELLA MUSIC FESTIVAL (collectively, "the Coachella Marks"), which Complainant uses in connection with its world-famous Coachella festival.
Claimant states that, in addition to these numerous registrations, which carry the presumption of validity, Complainant also owns common law trademark rights in its Coachella Marks from nearly two decades of extensive use in commerce. See Complaint Exhibits B-E.
Complainant contends that the subject domain names <teachella.net> and <teachella.org> plainly misappropriate sufficient textual components from Complainant's COACHELLA and CHELLA marks, such that an ordinary Internet user who is familiar with Complainant's COACHELLA Marks and Complainant's goods and services would, upon seeing the domain names, think an affiliation exists between Respondent's domain names and those of Complainant. And that Respondent's domain names, <teachella.org> and <teachella.net> merely combine the letters "tea" with the entire CHELLA mark or create a portmanteau of "teach" and CHELLA. And that creating a portmanteau formed by combining a complainant's mark with other words satisfies the confusingly similarly prong of the Policy ¶4(a)(i).
Complainant alleges that Respondent's actual use of the subject domain names evidences that Respondent expects consumers to believe that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark. And that Respondent uses the subject domain name <teachella.net> to redirect consumers to Respondent's website at <teachella.org> advertising its entertainment event featuring "Live Music, food varieties and market vendors." See Complaint Exhibits M and L. And that these facts support that Respondent is attempting to create an association with Complainant and its famous Coachella and Chella music festivals.
Complainant further contends that the addition of a generic top-level domain name (e.g., .com, .net, or .org, etc.) to the subject domain names is irrelevant to the confusingly similar analysis. And that the addition of the generic top-level domain name .org and .net are insufficient to avoid a finding of confusing similarity between the subject domain names and Complainant's Coachella Marks. And that accordingly, prior administrative proceedings support a finding that the subject domain names are confusingly similar to Complainant's marks.
Complainant alleges that Respondent cannot demonstrate rights under ¶ 4(c)(i) of the Policy, which arise only if "before any notice to respondent of the dispute," Respondent uses or prepares to use "the domain names in connection with a bona fide offering of goods or services." In these regards, Complainant asserts that using the subject domain name to divert Internet users to Respondent's website and confusing them into believing that some sort of affiliation exists between it and Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).")
Complainant contends that Respondent's unauthorized use of domain names, <teachella.net> and <teachella.org>, disrupts Complainant's business in order to sell competing products. And that this competing use is evidence that Respondent does not make a bona fide offering of goods or services or a legitimate, noncommercial or fair use of disputed domain names under the Policy.
Complainant alleges that Respondent is not commonly known by the disputed domain names <teachella.net> and <teachella.org> as Respondent is listed in the whois data as "Registration Private" at "Domains By Proxy, LLC." See Complaint Exhibit A.
Complainant further states, that they have neither licensed, nor otherwise given Respondent permission to use its Coachella Marks. And that therefore, Respondent cannot defend its use of the Coachella marks, under ¶ 4(c)(ii) of the Policy.
Complainant further contends that Respondent's commercial use of confusingly similar domain names, does not satisfy the prongs of ¶ 4(c)(iii) of the Policy, which states: "you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, or to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Complainant alleges that Respondent is appropriating Complainant's mark to divert Complainant's customers to Respondent's competing business, which is evidence of bad faith registration and use pursuant to Policy. And that this misappropriation consists of Respondent's registration and use of confusingly similar subject domain names to redirect to a website which promotes an event featuring music and food, that is not connected with Complainant, advertising a "Rock Fest" and an invitation to "come enjoy live music, food varieties, market vendors. . ." See Complaint Exhibits M and L.
Complainant alleges that this misappropriation of the mark by the Respondent, violates ¶ 4(b)(iv) of the Policy, which states that: "By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Complainant alleges that Respondent's bad faith is further evidenced by Respondent's actual knowledge of the COACHELLA Marks. And that due to the global reach of the Internet, Complainant's COACHELLA Marks are widely known throughout the United States and the world, and therefore, Respondent obviously chose a phonetically similar mark to promote its event. See Complaint Exhibits B-J. And that further, Complainant notified Respondent of Complainant's trademark rights on May 29, 2024, and Respondent has continued to use the subject domain names. And that correspondence between the counsels for Registrant and Complainant is attached as Complaint Exhibit N.
B. Respondent
Respondent contends that Teachella Foundation Inc. is a nonprofit company formed in Texas that has been using the TEACHELLA mark for almost four years. And that Teachella Foundation Inc. is a nonprofit fundraising foundation run by teachers for teachers. See Response Exhibits A-D. And that the domain names are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Rule 3(b)(ix)(1); UDRP ¶ 4(a)(i). And that Teachella Foundation Inc. has established common law rights in various forms of the mark, such as TEACH ELLA, TEACHella, and TEACHELLA.
Respondent contends that Complainant incorrectly argues that the mark is a combination of TEA and CHELLA or that the mark is a portmanteau. And that the mark is actually TEACH and ELLA, with Ella referring to either the female gender name or the "she/her" pronoun in Spanish. And that the Teachella Foundation Inc. is run by an all-female leadership team. See Response Exhibit D. And that the Complainant does not have rights in either of these marks.
Respondent alleges that Respondent (domain-name holder) should be considered as having rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. Rule 3(b)(ix)(2); UDRP ¶ 4(a)(ii). And that the disputed domain names of <teachella.net> and <teachella.org> are in connection with a bona fide offering of goods or services. And that Teachella Foundation Inc., as a fundraising foundation for teachers, actively holds fundraisers and that all of their activities support this aim. Respondent alleges that a few of the activities that Teachella Foundation Inc. sponsors are: a shoe give away; free haircuts; vendor booths; donations online; provision of teacher supplies; and scholarships. See Response Exhibits 1 through 7.
Respondent states that Response Exhibit 8 shows the commercial website where individuals can make donations. And that all these actions over the last almost four years, show that Respondent is making a bona fide offering of goods or services at the subject domain name.
Respondent lastly alleges that the domain name(s) <teachella.net> and <teachella.org> should not be considered as having been registered and being used in bad faith. Rule 3(b)(ix)(3); UDRP ¶4(a)(iii). And that Teachella Foundation Inc. offers different goods and services. And that Teachella Foundation Inc. is not in the business of music festivals, but is a nonprofit fundraising teaching foundation. And that Complainant offered a festival, which was not even organized or facilitated by the Teachella Foundation Inc. And that the Rock Fest Festival is run by Chancla Academy. And finally, that Respondent was not, and has not been, principally engaged in competing music festivals.
C. Additional Submissions
Complainant's Additional Submission
Complainant's Reply to Respondent's Response essentially states that the question at issue does not concern Respondent's common law rights, but rather whether the subject domain names <teachella.org> and <teachella.net> are confusingly similar to Complainant's CHELLA and COACHELLA Marks.
Further, at the time of the instant UDRP filing, Respondent used the disputed domain names to advertise its entertainment event featuring, "Live music, food varieties and market vendors." Complainant's Additional Submission also referenced a screenshot of a Wayback Machine states that "Teachella is the biggest Teacher Appreciation festival in the world."
Respondent's Additional Submission
Respondent states that Complainant fails to meet all three (UDRP) tests and therefore, Panel should deny the requested remedy.
Respondent states that Respondent has established common law rights in various forms of the marks for goods/services in classes for fundraising, and that the Complainant has no rights in those marks for those classes.
Respondent states that Complainant only focuses on a few of Respondent's activities. But that Respondent engages in many activities which evidence a bona fide offering of goods and services at the subject domain names.
Respondent states that Respondent is not using the domain names in bad faith because Teachella Foundation offers different goods and services. And that Teachella Foundation Inc. is not in the business of music festivals, but is a non-profit teaching foundation.
Complainant's Sur Reply
Complainant states that Respondent's representations in its Additional Submission, that it did not use the subject domain names principally for promoting its festival featuring music, food and vendors are unsupported. For example, Respondent widely promoted its "Teachella Festival" as "Teachella, the Coachella of teacher celebrations."
Respondent's Sur Reply
Respondent states that the Complainant has focused on just a couple of events over an almost four year period and neglects where the Respondent actively engages in numerous activities a year. And that the Exhibits already submitted show various fundraising activities over the last several years to include: collection of backpack and school supplies, a school supply check from Amazon for $1000, awareness for student education in the arts, a restaurant donation day, and a grades for braids fundraising.
Respondent states that Exhibit 8 shows the commercial website linked from the domain name in question, where individuals can make donations. And that all these actions over the last almost four years show Respondent is making a bona fide offering of goods or services at the subject domain name.
FINDINGS
(1) The domain names <teachella.net> and <teachella.org> registered by Respondent are 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 names <teachella.net> and <teachella.org>; and
(3) the domain names <teachella.net> and <teachella.org> have been registered and are being used in bad faith.
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.
Identical and/or Confusingly Similar
Panel has viewed Complainant's Exhibit H, consisting of registration certificates for each of the following COACHELLA Marks, covering a wide variety of goods and services. Specifically, Complainant has evidenced ownership of: US Service Mark Registration No. 3,196,119 for COACHELLA; US Trademark Registration No. 4,270,482 for COACHELLA; US Service Mark Registration No. 5,235,905 for COACHELLA; US Trademark Registration No. 5,557,242 for COACHELLA; US Service Mark Registration No. 3,196,129 for COACHELLA (stylized): US Trademark Registration No. 4,266,400 for COACHELLA (stylized); US Service Mark Registration No. 5,235,903 for COACHELLA (stylized); US Service Mark Registration No. 3,196,128 for COACHELLA VALLEY MUSIC AND ARTS FESTIVAL; US Trademark Registration No. 3,965,563 for COACHELLA VALLEY MUSIC AND ARTS FESTIVAL; US Trademark Registration No. 4,008,651 for COACHELLA VALLEY MUSIC AND ARTS FESTIVAL ; US Trademark Registration Nos. 5,075,233 for CHELLA; and US Service Mark Registration No. 5,520,063 for CHELLA. The registration certificate for each registration is attached to this Complaint as Exhibit H.
This Panel rules that Registration with the United States Patent and Trademark ("USPTO") suffices to establish rights in a mark under Policy ¶ 4(a)(i). See DIRECTTV, LLC v. The Pearline Group, FA 12818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its right in such mark for the purposes of ¶ 4(a)(i)"). Therefore, this Panel concludes that Complainant has rights in the above cited suite of Coachella marks under Policy ¶4(a)(i).
Complainant's Exhibit B relays that the first Coachella, held in October 1999, drew some 25,000 attendees into the California desert a few hours' drive from Los Angeles, in Indio, California. The entire festival site, which includes the festival grounds, on-sight camping, parking and support operations, encompasses over 800 acres. And that currently, attendance at Coachella, aggregated over the multi-day festival, totals nearly 750,000 attendees per year. Further, Coachella showcases some of the most groundbreaking artists from all genres of music along with a substantial selection of art installations from all over the world.
The question at issue in this case concerns whether the subject domain names <teachella.org> and <teachella.net> are confusingly similar to Complainant's CHELLA and COACHELLA Marks.
Panel rules that Respondent's domain names of <teachella.net> and <teachella.org> contain approximate phonetic components from Complainant's COACHELLA and CHELLA marks, such that an ordinary Internet user who is familiar with Complainant's COACHELLA Marks and Complainant's goods and services would, upon seeing the domain names, think an affiliation exists between Respondent's domain names and those of Complainant. And that Respondent's domain names, of <teachella.org> and <teachella.net> merely combine the letters "tea" with the entire CHELLA mark. Combining a complainant's mark with other words satisfies the confusingly similarly prong of the Policy ¶ 4(a)(i). 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.) See also Coachella Music Festival, LLC v. jeff nelson, FA855606 (Forum Aug. 28, 2019) (finding kidchellacon.com confusingly similar).
Respondent's actual use of these disputed domain names evidences that Respondent expects consumers to believe that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark.
Panel's view of Complainant's Exhibits M and L clearly show that Respondent uses the subject domain name <teachella.net> to redirect consumers to Respondent's website at <teachella.org> advertising its entertainment event featuring "Live Music, food varieties and market vendors." Therefore, there is a high likelihood that anyone seeing Respondent's domain names or visiting the corresponding webpage, would be confused into believing that Respondent is affiliated with Complainant and its famous Coachella and Chella music festivals.
Panel was further influenced by Complainant's Additional Submission, which showed that Respondent was the organizer of festivals which included music. Respondent promoted its "Teachella Festival" and described it as "Teachella, the Coachella of teacher celebrations" along with screenshots of numerous festival themed posts.
Respondent's protestations in its Additional Submission that music festivals were incidental to other primary activities as free shoes and free haircuts, were not credible, particularly as Teachella's festival logo featured a guitar, which serves as a potent indicator of the musical theme of the festival.
The addition of a generic top-level domain name (e.g., .com, .net, or .org, etc.) to the subject domain names is irrelevant to the confusingly similar analysis. The addition of the generic top-level domain name .org and .net are insufficient to avoid a finding of confusing similarity between the subject domain names and Complainant's COACHELLA Marks. Therefore, the subject domain names are confusingly similar to Complainant's marks. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 0153545 (Forum May 27, 2003) ("the addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name").
Panel rules that, in accordance with UDRP Policy ¶ 4(a)(i), that the domain names of <teachella.net> and <teachella.org> are confusingly similar to Complainant's trademarks and servicemarks, and are likely to cause confusion as to Respondent's affiliation with Complainant.
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), then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp., FA 7680200 (Forum Nov. 2, 2011) (finding that a Complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii); see also Neal and Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").
Respondent has adduced no evidence that it has any right to own or to use any domain name, incorporating Complainant's suite of COACHELLA and CHELLA marks. Moreover, WHOIS information does not ascribe ownership of the disputed domains to Respondent. See Amazon Technologies, Inc v. LY ta, FA 1789106 (Forum June 21, 2018) (concluding a Respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Respondent does not use <teachella.net> and <teachella.org> for a bona fide offering of goods or services or legitimate noncommercial or fair use, as Respondent diverts internet traffic to Respondent's commercial website. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent's use of the complainant's LIFESTYLE Lounge mark to redirect internet users to respondent's own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii)).
The totality of Complainant's evidence, as described above, constitutes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names of <teachella.org> and <teachella.net>, under Policy ¶ 4(a)(ii).
Panel therefore concludes, that Respondent has not shouldered its shifted burden to show that Respondent does indeed, have rights or legitimate interests so as to satisfy Policy ¶ 4(c)(i).
Registration and Use in Bad Faith
Complainant has offered credible evidence that Respondent has registered and used the disputed domain names in bad faith. This evidence consists of Respondent's actual knowledge of the COACHELLA Marks, gained through the fact that Complainant's COACHELLA Marks are widely known throughout the United States and the Globe. In accordance with printouts of several news stories about Coachella, which are attached to Complaint as Exhibit B, Coachella is one of the most critically acclaimed music and art festivals in the world, with multiple bands, artists, food vendors, and stages. Yet albeit the fame of the COACHELLA and CHELLA marks, Respondent obviously chose a phonetically similar mark to promote its competing music festivals. See Complaint Exhibits B-J.
Further, Complainant notified Respondent of Complainant's trademark rights on May 29, 2024, and Respondent has continued to use the subject domain names. Correspondence between the counsel for Registrant and Complainant is attached as Complaint Exhibit N. This evidence further supports a finding of bad faith. The Panel therefore finds that Respondent had actual knowledge of Complainant's rights in the COACHELLA mark prior to registering the domain name, showing bad faith under Policy ¶ 4(a)(iii). Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant's COACHELLA mark when it registered and used the coachellastuff.com domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous).
Evidence of the registration and use of a domain name in bad faith is detailed in ¶ 4(b)(iv) of the Policy, which states that: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Here, Respondent has registered and used the confusingly similar disputed domain names to redirect to a website promoting an event with music and food that is not connected with Complainant, advertising a "Rock Fest" and "come enjoy live music, food varieties, market vendors. . ." See Complaint Exhibits M and L.
The use of domain names that are identical or confusingly similar to a complainant's mark to divert consumers to a competing business is bad faith under the policy. See Coachella Music Festival, LLC v. jeff nelson, supra ("the site attached to [kidchellacon.com] is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it advertises an entertainment event under a confusingly similar name after the Complainant had established rights in providing entertainment services under the CHELLA name."); See Coachella Music Festival, LLC v. Aaron Harding/ APEG, FA 865441 (Forum Oct.29, 2019) ("Respondent is attempting to attract Internet users for commercial gain by promoting a competing music festival.")
The Panel therefore finds, that Respondent has attempted to disrupt Complainant's business and to commercially benefit off of Complainant's mark in bad faith. See Coachella Music Festival, LLC v. Kine Paulsen, FA 892090 (Forum May 11, 2020) ("Indeed, as already noted, Respondent is attempting to attract, for commercial gain, Internet users to Respondent's own website [porchellafestival.com] by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon.")
Accordingly, Panel concludes that Respondent has registered and used the disputed domain names of <teachella.net> and <teachella.org> in bad faith.
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 <teachella.net> and <teachella.org> domain names be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq. Panelist
Dated: August 27, 2024
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page