Coachella Music Festival, LLC v. John Mercado
Claim Number: FA1904001840140
Complainant is Coachella Music Festival, LLC (“Complainant”), represented by David J. Steele of Tucker Ellis, LLP, California, USA. Respondent is John Mercado (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chellashop.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.
Flip Jan Claude Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2019; the Forum received payment on April 23, 2019.
On April 24, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chellashop.com> 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 April 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2019 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@chellashop.com. Also on April 25, 2019, 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 May 9, 2019.
On May 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jan Claude Petillion 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Coachella Music Festival, LLC, contends to have rights based on its registration of the mark COACHELLA with the United States Patent and Trademark Office ("USPTO") on January 9, 2007 under No. 3,196,119 in U.S. classes 100, 101 and 107 and on January 8, 2013 under No. 4,270,482 in U.S. classes 2, 5, 13, 22, 23, 29, 30, 33, 37, 38, 39, 40 and 50. Complainant also contends to have rights based on its registration of the mark CHELLA with USPTO on May 15, 2015 under No. 5,075,233 in U.S. classes 22 and 39 and on July 17, 2018 under No. 5,520,063 in U.S. classes 100, 101 and 107. See Compl. Ex. G. Complainant asserts to use its marks in connection to its music festival services and related products, and that its marks are well-known. Complainant considers the disputed domain name <chellashop.com> to be confusingly similar to Complainant’s marks.
According to Complainant, Respondent lacks rights and legitimate interests in <chellashop.com>. Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use as Respondent does not actively use and has not made any demonstratable preparations to use the disputed domain name. See Compl. Ex. H. Further, according to Complainant, Respondent has not been commonly known by the disputed domain name and is in no way affiliated with or licensed by Complainant.
Finally, Complainant maintains that Respondent registered and uses the disputed domain name <chellashop.com> in bad faith. Complainant maintains that Respondent fails to actively use the disputed domain name and that the fame and Respondent’s use of the CHELLA mark constitutes opportunistic bad faith.
B. Respondent
Respondent claims to have registered the disputed domain name in connection to an online store for women clothing. Respondent contends that he chose the disputed domain name on the basis of its childhood nickname “Chelle”, but that it switched the letter “E” to an “A” to make it sound more feminine.
Respondent claims that it removed the content from the website connected to the disputed domain name but failed to terminate the auto payment with the Registrar. Respondent maintains that it did not know of Complainant’s rights in the CHELLA mark and did not intend to copy or interfere with Complainant’s business. Respondent planned on letting the disputed domain name lapse when it expired on May 2, 2019.
Complainant, Coachella Music Festival, LLC, is the owner and producer of the Coachella Valley Music and Arts Festival which is held annually at the Empire Polo Club in Indio, California. The Coachella festival attracts international performers and attendance is estimated at nearly 600,000, generating a revenue of over 110,000,000 USD. In connection with its music festival, Complainant registered the COACHELLA mark with the USPTO on January 9, 2007 under No. 3,196,119 in U.S. classes 100, 101 and 107 and on January 8, 2013 under No. 4,270,482 in U.S. classes 2, 5, 13, 22, 23, 29, 30, 33, 37, 38, 39, 40 and 50. Complainant also registered the mark CHELLA with USPTO on November 1, 2016 under No. 5,075,233 in U.S. classes 22 and 39 and on July 17, 2018 under No. 5,520,063 in U.S. classes 100, 101 and 107. See Compl. Ex. G.
Respondent registered the disputed domain name <chellashop.com> on May 3, 2018.
Respondent's disputed domain name resolves to an inactive “shopify” website which is intended to set up an online store. The website displays the following message: “Only one step left! To finish setting up your new web address, go to your domain settings, click “Connect existing domain”, and enter: chellashop.com”. See Compl. Ex. H.
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.
Complainant shows to have rights in the COACHELLA and CHELLA marks through registration of the marks with the USPTO. (e.g. COACHELLA - Reg. No. 3,196,119, registered January 9. 2007; CHELLA – Reg. No. 5,075,233, registered November 1, 2016). See Compl. Ex. G. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark…. Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
It is well accepted that Policy ¶ 4(a)(i) functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s mark(s) and the disputed domain name. Complainant claims that the disputed domain name <chellashop.com> is confusingly similar to Complainant's “COACHELLA marks”.
The Panel determines that a distinction should be made between Complainant’s COACHELLA and CHELLA mark for the purpose of the examination for Policy ¶ 4(a)(i). Where the disputed domain name incorporates Complainant’s CHELLA mark in its entirety, it only incorporates the last part of the COACHELLA trademark, leaving out the first three letters “COA”. The Panel does not consider the “CHELLA” part of Complainant’s COACHELLA trademark to be a sufficiently dominant feature of the trademark that is directly recognizable in the disputed domain name. See section 1.7. of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
With regard to Complainant’s CHELLA mark, the disputed domain name incorporates this mark in its entirety, merely adding the non-distinctive text “shop”. The Panel is of the opinion that the mere addition of non-distinctive text to the Complainant’s mark in its entirety constitutes confusing similarity, as set out in Policy ¶ 4(a)(i). See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); See also 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). Although the above is sufficient with respect to Policy¶4(a)(i), the Panel notes that the term “CHELLA” is also a Spanish town in the Province of Valencia and a personal name that appears unrelated to Complainant’s CHELLA marks.
The top-level domain is usually considered to be irrelevant in assessing identity or confusing similarity (See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Guo MengNi / GuoMengNi Guo / Guo GuoMengNi / 郭孟妮, FA 1747411 (Forum Oct. 3, 2017) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) As a result, the addition of the “.com,” gTLD in the disputed domain name can be disregarded for the finding of identity or confusing similarity.
In view of the above, this Panel finds that the disputed domain name is confusingly similar to Complainant's CHELLA mark for the purposes of Policy ¶ 4(a)(i).
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 shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (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 & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (holding that 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”).
Complainant argues that because Respondent is not commonly known as “CHELLA”, there is no connection between the disputed domain name and Respondent, and Complainant has not authorized, licensed, or endorsed Respondent’s use of the COACHELLA or CHELLA marks in any form. WHOIS information associated with the disputed domain name identifies Respondent as “John Mercado”, which does not appear to resemble the disputed domain name. See Compl. Ex. A. Previous panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of authorization or licensing arrangement from a complainant. 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 claims that the disputed domain name is a derivation of its childhood nickname “Chelle” but fails to provide any evidence to substantiate this claim. The fact that Respondent was never legitimately known by the disputed domain name and was never authorized, licensed or otherwise permitted by Complainant to operate domain names incorporating its CHELLA mark may be used as evidence of lacking rights or legitimate interests. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). For these reasons, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues next that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name redirects to an inactive website which is intended to be configured as an online store. Respondent contends that it has used the website connected to the disputed domain name for selling women’s clothing. However, Respondent does not provide any evidence to substantiate this claim.
Failure to actively use a disputed domain name may demonstrate a lack of rights or legitimate interests under Policy ¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). In the present case, the disputed domain name is not actively used and resolves to a webpage with the message “Only one step left! To finish setting up your new web address, go to your domain settings, click “Connect existing domain”, and enter: chellashop.com”. See Compl. Ex. H. The Respondent also provides no evidence of any demonstrable preparations to use the disputed domain name in accordance with section 2.2. of WIPO Overview 3.0. As a result, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
In light of the above, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name for the purposes of Policy ¶ 4(a)(ii).
Complainant asserts that Respondent must have had knowledge of Complainant’s rights in its COACHELLA marks at the time of registration and thus registered and used the disputed domain name in bad faith. Complainant also contends that, in light of the similarity between the disputed domain name and its well-known COACHELLA marks, there is no conceivable use of the disputed domain name by Respondent that would be legitimate and would not constitute opportunistic bad faith.
Respondent claims that it had no knowledge of Complainant and its COACHELLA marks at the time of registration of the disputed domain name and that it merely registered the disputed domain name for a legitimate business use of selling women’s clothing online.
The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by Respondent that would be legitimate and would not interfere with Complainant’s well-known mark (See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014); Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of Complainant’s mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the Respondent’s concealing its identity or use of false contact details (See section 3.3 of WIPO Overview 3.0).
In the present case, the Panel finds that, in contrast to the COACHELLA mark, Complainant fails to show that its CHELLA mark is sufficiently well-known. All of Complainant’s exhibits substantiating the well-known character of its mark relate to its COACHELLA mark. See Compl. Ex. B., C., D., E. and F. Since the disputed domain name is considered to only be confusingly similar to Complainant’s CHELLA mark, the future active use of the disputed domain name could thus be legitimate without interfering with Complainant’s marks.
The Panel is also of the opinion that Complainant does not sufficiently show Respondent’s constructive knowledge of the COACHELLA or CHELLA marks to evidence bad faith registration of the disputed domain name. Considering that the term “Chella” is used as a personal name or to denote a town in Spain, the Panel finds that it is plausible that the disputed domain name was registered in good faith by Respondent, without any knowledge of or intention to target Complainant’s marks.
Lastly, Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).
The Panel therefore finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii) and that Respondent has not registered and used the disputed domain name in bad faith. See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <chellashop.com> domain name REMAIN WITH Respondent.
Flip Jan Claude Petillion, Panelist
Dated: May 27, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page