National Arbitration Forum

 

DECISION

 

La Quinta Worldwide, LLC v Fisk Enterprises c/o J Fisk

Claim Number: FA0508000540243

 

PARTIES

Complainant is La Quinta Worldwide, LLC (“Complainant” or “La Quinta”), represented by H. Lisa Calico, of Wong Cabello, L.L.P., P.O. Box 685108, Austin, TX 78768-5108.  Respondent is Fisk Enterprises c/o J Fisk (“Respondent” or “Mr. Fisk”), 25511 Buckwood, Lake Forest, CA 92630.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <laquintainn.com>, registered with Gkg.net, Inc.

 

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.

 

Roberto A. Bianchi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 15, 2005.

 

On August 15, 2005, Gkg.net, Inc. confirmed by e-mail to the National Arbitration Forum that the <laquintainn.com> domain name is registered with Gkg.net, Inc. and that the Respondent is the current registrant of the name.  Gkg.net, Inc. has verified that Respondent is bound by the Gkg.net, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 19, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 8, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@laquintainn.com by e-mail.

 

A timely Response was received and determined to be complete on September 7, 2005.

 

On September 12, 2005 Complainant sent an Additional Submission to the National Arbitration Forum, in compliance of Supplemental Rule # 7. There was no additional submission by Respondent.

 

On September 16, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. In its Complaint, Complainant contends the following:

 

The disputed domain name, <laquintainn.com>, is identical to Complainant’s name and mark, LA QUINTA INN. Respondent has no rights or legitimate interests in the <laquintainn.com> domain name. Respondent is not in any way affiliated with Complainant, and has not been granted a license or other permission by Complainant to use the LA QUINTA or LA QUINTA INN marks in any form. Respondent is not commonly known by the name “La Quinta Inn,” and owns no prior trademark rights in LA QUINTA INN. Respondent is affiliated with a motel called Borg’s Motel a/k/a Borg’s Ocean Front Motel.  Respondent owns the <borgsmotel.com> domain name. As such, Respondent is a competitor of Complainant and seeks to disrupt Complainant’s business by thwarting Internet users who are seeking Complainant. Respondent is not making a legitimate noncommercial or fair use of the domain name. Rather, Respondent is inactively holding the domain name. As Respondent is using the disputed domain name to capitalize on the goodwill surrounding Complainant’s LA QUINTA marks and to disrupt Complainant’s business, Respondent cannot be considered to be making a bona fide offering of goods or services at the disputed domain name, nor a legitimate noncommercial or fair use of the domain name. Respondent registered and is using the <laquintainn.com> domain name in bad faith.

 

B. In his Response, Respondent contends the following:

 

Respondent is a real estate broker, and a builder/developer. He purchases domain names for future use to market his real estate listings and other items. He has never sold a domain name. Mr. Fisk purchased the <laquintainn.com> domain name in 1999, before the adoption of the UDRP.  He denies that he is affiliated with Borg’s Motel or with any other hotel or motel. La Quinta is the name of a city in California that is about eighty years old. Complainant should not be permitted to register the name of a city. Mr. Fisk has owned the domain name for about six years and has never used it. He bought it for his personal use. The first time Complainant contacted him was in July 2005. Complainant did not have any use for the domain name because it took Complainant over five years to demand that Respondent surrender the domain name to Complainant.

 

C. Additional Submission

 

In its Additional Submission, Complainant contends that trademark protection is not automatically denied for any mark that happens to coincide with a geographic place. When a geographic term is used in an arbitrary manner, taking into consideration the nature of the goods and services, the mark is not considered to be primarily geographically descriptive. LA QUINTA and LA QUINTA INN do not primarily convey geographic significance. LA QUINTA is a mark for Complainant’s hotels and Complainant does not operate any hotel in La Quinta, California. Even if Complainant’s marks were geographically descriptive, the many years of use would give rise to a presumption of acquired distinctiveness. Furthermore, Respondent has no interest in an “inn” in La Quinta, California.

 

FINDINGS

1 – The disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.

 

2 – Respondent has no rights or legitimate interests in the disputed domain name.

 

3 – The disputed domain was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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

 

Complainant asserts rights in the LA QUINTA INN mark through the following registrations with the USPTO.

  

Mark                           Reg. Date         Reg. Number        Covered Services

 

 

See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

The <laquintainn.com> domain name is identical or confusingly similar to Complainant’s LA QUINTA INN mark. Respondent’s addition of the gTLD “.com” and the lack of the spaces between the terms “LA”, “QUINTA” and “INN” are insufficient to distinguish the domain name from the mark pursuant to Policy paragraph 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. 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.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

Some panels denied complaints based on city names because there was insufficient evidence that the names had acquired any secondary meaning.  See City of Salinas v. Baughn, FA 97076 (Nat. Arb. Forum June 4, 2001); see also City of Myrtle Beach v. Info. Ctrs., Inc., FA 103367 (Nat. Arb. Forum Mar. 8, 2002). In the present case, that “La Quinta” is the name of a city has no consequence since LA QUINTA INN acquired secondary meaning through its use and registration with the USPTO. See Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (“[U]nder U.S. trademark law, only registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”). Complainant’s registrations are conclusive evidence of the distinctiveness of the LA QUINTA INN mark. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (“[T]his Panel is constrained to defer, as it must, to the USPTO’s initial determination implicit in its having granted a registration, i.e., that each of Complainant’s SKUNK WORKS Marks has acquired sufficient distinctiveness and thus qualifies for continued federal trademark protection and enjoys all the rights afforded thereby.”).

 

Complainant’s LA QUINTA INN (& design) mark has been registered since February 22, 1994, that is five years before Respondent registered the <laquintainn.com> domain name with Gkg.net (on February 21, 1999).

 

For these reasons the Panel finds that Complainant has proved the first element of the Policy.

 

Rights or Legitimate Interests

Respondent claims that he is a real estate broker and builder/developer, and that he purchases domain names, for future use, to market his real estate listings and other items. As examples of these assertions, he mentions his <backbaybeauty.com> and <lifepak7.com> websites. On September 19, 2005, this Panelist used his browser to connect to both web sites. As to <backbaybeauty.com>, the resulting web page showed an offer for sale and several photos of a single family home and its surroundings. The Panel’s attempt to connect to <lifepak7.com> resulted in a “Cannot find server or DNS Error” message.

 

From the fact that Respondent is using the <backbaybeauty.com> web page for advertising real estate for sale, the Panel cannot infer that the <laquintainn.com> website is likely to be used by Respondent for similar purposes. In fact, a Panel’s attempt made on September 19, 2005 to visit the <laquintainn.com> website resulted in a DNS error message. Paragraph 4(c)(i) of the Policy allows a respondent to demonstrate its legitimate interest in a domain name by showing, before any notice of the dispute, its 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. In the present case, Respondent has not shown any use of the disputed domain name, or mentioned any other preparation (demonstrable or not) to use the domain name in any manner, thus failing to prove the circumstance of Policy paragraph 4(c)(i).

 

Respondent has not alleged or evidenced that he has been commonly known by the domain name (even if he has acquired no trademark or service mark rights), or that he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. UDRP, paragraphs 4(c)(ii) and 4(c)(iii). Although the circumstances described in paragraph 4(c) are “without limitation,” Respondent failed to point at any other fact or circumstance allowing to infer that he has rights or legitimate interests in the disputed domain name.

 

The Panel thus concludes that Complainant proved the second element of the Policy.

 

Registration and Use in Bad Faith

Complainant contends that Respondent is a direct competitor of Complainant and that Respondent operates a competing motel in Pacific Grove, California. However, Complainant failed to prove that Respondent is a competitor of Complainant or that Respondent registered the <laquintainn.com> domain name primarily to disrupt the business of a competitor, which would be evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iii).

 

Respondent denies that he is “affiliated with Borg’s Ocean Front Motel or any other hotel or motel,” but he does not contest that he has been the registrant, as well as the administrative, technical and billing contact of the <borgsmotel.com> domain name registration since February 17, 1999. See Exhibit G to the Complaint. After Respondent stated that he had no affiliation with Borg’s Motel, Complainant contended that Respondent's registration of <borgsmotel.com> and <laquintainn.com> constitutes a “pattern of . . . conduct” under Paragraph 4(b)(ii) (“[Y]ou have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct . . . .”). However this allegation is not sufficient to establish a pattern of bad faith registration.  See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“The Panel does not believe that the registration of two domain names rises to the level of a pattern of conduct.”).

 

The Panel believes that Respondent is passively holding the domain name, this being evidence of registration and use in bad faith. Inaction (e.g., passive holding) can, in certain circumstances, constitute bad faith use of a domain name. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000) (“[P]aragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith. . . . [I]n considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”).

 

The following circumstances reveal Respondent’s passive holding of the disputed domain name in bad faith:

 

a)       Respondent, although not affiliated with either Borg’s Motel or Complainant, registered the <laquintainn.com> domain name four days after having registered <borgsmotel.com>. This leads the Panel to believe that Respondent was aware that both domain names reflected marks and/or trade names belonging to third parties in the hotel industry.

 

b)      In addition to many other hotels and motels in various U.S. locations, Complainant operates over twenty “La Quinta Inn & Suites” hotels in several cities in California, the state where Respondent lives. Respondent is thus unlikely to have ignored the existence of Complainant’s hotels and motels operating under Complainant’s mark at the time he registered the disputed domain name.

 

c)       Although Respondent certainly does possess the capacity to post advertising content on a website, as shown on Respondent’s <backbaybeauty.com>, it is a fact that the website under the disputed domain name has featured no content since its registration some six years ago. For this reason Respondent’s contention that he intends to post real estate listings or other items on the <laquintainn.com> website lacks credibility.

 

d)      Under the circumstances of this case it would be very difficult to conceive that Respondent could post real estate listings or other items on the <laquintainn.com> website without the purpose of exploiting Complainant’s renown and goodwill for commercial gain; such postings would amount to bad faith use under paragraph 4(b)(iv) of the Policy (“[B]y 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.”).

 

For the reasons above, the Panel concludes that the disputed domain name was registered and is being used 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 <laquintainn.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Roberto A. Bianchi, Panelist
Dated: September 28, 2005

 

 

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