Complainant is Coachillin’ Holdings, LLC, United States of America (“United States”), represented by Dinsmore & Shohl LLP, United States.
Respondent is Domain Privacy Service FBO Registrant, United States / Brent Malone, United States.
2. The Domain Name and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2021. On September 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 20, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 18, 2021.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on October 21, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundComplainant is the owner and operator of an agri-business park and provides real estate services, agricultural design and consulting services, and related educational and business consulting services within the cannabis industry.
Since at least as early as 2014, Complainant adopted and has used the COACHILLIN trademark in connection with the marketing, advertising, promotion, sale, and rendering of Complainant’s agri-business park.
Complainant applied for and owns trademark registrations for the COACHILLIN trademark worldwide (the “COACHILLIN Mark”), including the below United States trademarks evidenced in the Complaint:
COACHILLIN – United States Reg. No. 4,597,127 – Class 25 – registered on September 2, 2014;
COACHILLIN – United States Reg. No. 5,170,824 – Class 35 – registered on March 28, 2017;
COACHILLIN – United States Reg. No. 5,888,851 – Class 44 – registered on October 22, 2019;
COACHILLIN – United States Reg. No. 6,064,563 – Classes 35, 38, 42, and 45 – registered on May 26, 2020; and
COACHILLIN – United States Reg. No. 6,389,516 – Class 35 – registered on June 15, 2021.
Complainant has registered and continually used the
The Disputed Domain Names were registered on December 10, 2020. The Disputed Domain Names resolve to websites comprised of sponsored pay-per-click search terms.
5. Parties’ Contentions A. ComplainantThe Disputed Domain Names are confusingly similar to the COACHILLIN Mark as the Disputed Domain Names wholly incorporate the COACHILLIN Mark followed by the terms “homes” or “housing”. The presence of these terms does not serve to distinguish the Disputed Domain Names from the COACHILLIN Mark. A reasonable Internet user would assume the Disputed Domain Names are affiliated with the COACHILLIN Mark since “homes” and “housing” are related to the real estate services Complainant, in part, provides.
Respondent does not have any rights or legitimate interests in the Disputed Domain Names. Respondent is not commonly known by the names “coachillin”, “coachillin homes”, or “coachillin housing”, and Complainant has not assigned, sold, or transferred any rights in its COACHILLIN Mark to Respondent. Complainant has also not granted Respondent permission to use or register the COACHILLIN Mark as a domain name.
Respondent cannot assert that it has been using the Disputed Domain Names, prior to any notice of the present dispute, in connection with a legitimate noncommercial or fair use, nor in connection with a bona fide offering of goods or services.
The Disputed Domain Names are being used to resolve to pages that indicate the Websites are under development and provide links to related search terms. Respondent is not making a bona fide offering of goods or services in connection with the Disputed Domain Names because Respondent’s use thereof appears intended to generate click-through revenue.
Respondent likely had knowledge of Complainant’s COACHILLIN Mark prior to registration of the Disputed Domain Names since a routine Internet search when the Disputed Domain Names were registered would have rendered Complainant’s use of the name and trademark. Given the unusual nature of the name “coachillin”, it is unlikely that Respondent would have decided to register the Disputed Domain Names unless it had actual knowledge of the COACHILLIN Mark.
Given (i) the similarity between Complainant’s COACHILLIN Mark and the Disputed Domain Names; (ii) that the Disputed Domain Names resolve to parking pages containing what appear to be pay-per-click search terms; and (iii) Respondent is generating click-through commissions from these ads, it is likely that it was Respondent’s intention to disrupt the business of Complainant and/or to attract users to the Disputed Domain Names for commercial gain.
Respondent’s failure to respond to any of Complainant’s attempts at contact and its employment of a privacy protection service in registering the Disputed Domain Names also supports an inference of bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant has demonstrated it owns the registered trademark rights in the COACHILLIN trademark in the United States and throughout the world. The addition of the terms “homes” or “housing” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).
Accordingly, the Disputed Domain Names are confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate InterestsComplainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; has not at any time been commonly known by the Disputed Domain Names; and is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Complainant has also presented prima facie evidence that Respondent is using the Disputed Domain Names to direct Internet users seeking to find Complainant’s website to parking pages containing ads that generate click-through revenue for Respondent.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Disputed Domain Names were registered several years after Complainant first registered and used its COACHILLIN Mark. The evidence provided by Complainant makes it clear Respondent undoubtedly knew of Complainant’s COACHILLIN Mark and knew that it had no rights or legitimate interests in the Disputed Domain Names.
There is no benign reason for Respondent to have registered domain names that are confusingly similar to Complainant’s name and mark.
Currently, the Disputed Domain Names resolve to landing pages with pay-per-click links to search terms. See section 3.5 of the WIPO Overview 3.0. Furthermore, Complainant has submitted evidence that Respondent has employed a privacy protection service in registering the Disputed Domain Names. This fact, in conjunction with the pay-per-click links on the aforementioned landing pages, is indicative of Respondent’s bad faith.
The Panel finds that the only plausible basis for registering and using the Disputed Domain Names have been for illegitimate and bad faith purposes.
Accordingly, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names,
Colin T. O’Brien
Sole Panelist
Date: November 4, 2021