La Quinta Worldwide, LLC v. Damir
Kruzicevic
Claim
Number: FA0508000528474
Complainant is La Quinta Worldwide, LLC (“Complainant”),
represented by H. Lisa Calico of Wong Cabello, L.L.P.,
P.O. Box 685108, Austin, TX 78768-5108.
Respondent is Damir Kruzicevic (“Respondent”),
Vukovarska 43, Split, na 21000, HR.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <laquintainns.com>, registered with Fabulous.com
Pty Ltd.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 1, 2005.
On
August 5, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the <laquintainns.com> domain name is
registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is
bound by the Fabulous.com Pty Ltd. 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 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 25, 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@laquintainns.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 1, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Tyrus R. Atkinson, Jr., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles
of law that the Panel deems applicable, without the benefit of any response
from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <laquintainns.com>
domain name is confusingly similar to Complainant’s LA QUINTA INN mark.
2. Respondent does not have any rights or
legitimate interests in the <laquintainns.com> domain name.
3. Respondent registered and used the <laquintainns.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, La Quinta Worldwide, LLC, offers quality
hotel and motel services throughout the United States under the LA QUINTA
family of marks. With more than 65,000
hotel rooms, Complainant is one of the largest owners and operators of
limited-service hotels in the United States.
Complainant is the owner of numerous registrations with the United States
Patent and Trademark Office (“USPTO”) of LA QUINTA-related marks, including LA
QUINTA (Reg. No. 875,802 issued August 26, 1969) and LA QUINTA INN (Reg. No.
1,823,440 issued February 22, 1994 and Reg. No. 1,841,032 issued June 21,
1994). Complainant has used its LA
QUINTA mark since at least as early as 1968 in association with its hotel
services.
Respondent registered the <laquintainns.com> domain name on May 16, 2000,
approximately six years after Complainant registered its LA QUINTA INN mark and more than thirty years
after Complainant began using its LA QUINTA mark. The disputed domain name resolves to a website at
http://www.cheaprooms.com/laquintainns/ where Respondent advertises bookings
for Complainant’s hotel rooms and a many of Complainant’s competitors. Additionally, the website displays
Complainant’s logo.
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."
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(e), 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 and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”).
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 has
provided evidence of its registration of the LA QUINTA INN mark with the
USPTO. Complainant’s registration of
its mark with a federal authority is sufficient to establish a prima facie
case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). 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 Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
Complainant
asserts that the <laquintainns.com> domain name is confusingly similar to
Complainant’s registered LA QUINTA INN mark, because the disputed domain name
is formed simply by adding an “s” to Complainant’s mark. Simply adding an “s” to Complainant’s mark
is not sufficient under the Policy to form a domain name distinguishable from
the mark. Furthermore, the addition of
the generic top-level domain (“gTLD”) “.com” is irrelevant to a finding of
confusing similarity. Thus, the Panel
concludes that the domain name is confusingly similar to Complainant’s mark in
satisfaction of Policy ¶ 4(a)(i). See
Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb.
Forum Dec. 6, 2003) (“It has been established that the addition of a generic
top-level domain is irrelevant when considering whether a domain name is
identical or confusingly similar under the Policy.”); see also Universal
City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000)
(finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS
STORE mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it); see also Cream Pie
Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) ( “[T]he addition
of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent
the likelihood of confusion caused by the use of the remaining identical mark.
The domain name <creampies.com> is similar in sound, appearance, and
connotation.”).
The Panel
determines that Complainant has satisfied Policy ¶ 4(a)(i).
Under the
Policy, the complainant has the initial burden of proving that the respondent
lacks rights and legitimate interests in the disputed domain name. In Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel
held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Having found that Complainant
has met its initial burden under Policy ¶ 4(a)(ii) by establishing a prima
facie case, the Panel will now analyze whether Respondent has met its
burden to establish rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c).
Complainant
contends that Respondent is not commonly known by the <laquintainns.com>
domain name and that Complainant has not licensed or otherwise authorized
Respondent to use any version of Complainant’s LA QUINTA INN mark for any
purpose. The WHOIS information for the
disputed domain name lists Respondent as “Damir Kruzicevic” and identifies no
other connection between Respondent and the disputed domain name. Because Respondent has failed to present any
evidence to the contrary, the Panel is permitted to accept Complainant’s
assertions that Respondent is not commonly known by the disputed domain
name. The Panel, therefore, finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that
one has been commonly known by the domain name prior to registration of the
domain name to prevail"); see also Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because
Respondent failed to submit a Response, “Complainant’s submission has gone
unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”).
Respondent is
using the <laquintainns.com> domain name to redirect Internet
users searching for Complainant’s hotel services to a website that advertises
bookings for Complainant’s hotels and the hotels of Complainant’s
competitors. The Panel finds that such
use of Complainant’s LA QUINTA INN mark to attract Internet users to
Respondent’s competing commercial website for Respondent’s benefit does not
qualify as a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the domain name under
Policy ¶ 4(c)(iii). See Nike,
Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona
fide offering of goods or services where the respondent used the
complainant’s mark without authorization to attract Internet users to its
website, which offered both the complainant’s products and those of the
complainant’s competitors); see also DLJ
Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”). Furthermore,
in failing to submit a response to Complainant’s
contentions, Respondent has neglected to provide any evidence that would
challenge Complainant’s prima facie case. The Panel, therefore, finds that Respondent has not established
rights or legitimate interests in the disputed domain name under Policy ¶
4(c)(i) or (iii). See
Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26,
2000) (“In the absence of direct evidence, the complainant and the panel must
resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the
Rules [authorizes] a panel to draw such inferences from respondent’s failure to
respond ‘as it considers appropriate.’”).
The Panel
determines that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <laquintainns.com> domain name to intentionally attempt
to attract Internet users interested in information regarding Complainant’s
hotel business to Respondent’s competing website. The disputed domain name incorporates Complainant’s LA QUINTA INN
mark in its entirety and displays Complainant’s logo on the website located at
the domain name. The Panel determines
that Respondent’s attempts to benefit commercially from attracting Internet
users to Respondent’s website through a likelihood of confusion is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the
respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy 4(b)(iv)); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles,
D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and
used the <wwfauction.com> domain name in bad faith because the name
resolved to a commercial website that the complainant’s customers were likely
to confuse with the source of the complainant’s products, especially because of
the respondent’s prominent use of the complainant’s logo on the site).
Complainant uses
its LA QUINTA INN mark in association with its hotel business, and Respondent
is using the <laquintainns.com> domain name to attract Internet
users to Respondent’s competing hotel reservation booking website. These circumstances indicate to the Panel
that Respondent is competing with Complainant and registered the domain name
that includes Complainant’s mark to disrupt Complainant’s business by diverting
Complainant’s potential customers to Respondent’s website. See Lambros v.
Brown, FA 198963 (Nat. Arb. Forum Nov. 19,
2003) (finding that the respondent registered a domain name primarily to
disrupt its competitor when it sold similar goods as those offered by the
complainant and “even included Complainant's personal name on the website,
leaving Internet users with the assumption that it was Complainant's business
they were doing business with”); see also Disney Enters., Inc. v.
Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a
domain name confusingly similar to Complainant's mark to divert Internet users
to a competitor's website. It is a reasonable inference that Respondent's
purpose of registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and]
(iv).”).
While Policy ¶
4(b) lists four circumstances that constitute evidence of bad faith
registration and use if they are found to be present, this list is not intended
to be a limitation on finding evidence of bad faith registration and use. In fact, additional factors can be used by
the Panel to support findings of bad faith registration and use. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see
also Twentieth Century Fox Film Corp.
v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel must
look at the “totality of circumstances”).
Respondent’s
registration of the <laquintainns.com> domain name, which contains
Complainant’s LA QUINTA INN mark in its entirety, suggests that Respondent knew
of Complainant’s rights in the mark.
The similarity between Complainant’s business and the content displayed
on Respondent’s website, including the use of Complainant’s logo, is further
evidence that Respondent had knowledge of Complainant’s rights in the LA QUINTA
INN mark. Additionally, Complainant’s
registration of its mark with the USPTO conferred upon Respondent constructive
knowledge of Complainant’s rights in the mark at the time of registration. Respondent’s registration of a domain name
that contains Complainant’s mark, with knowledge of Complainant’s rights in the
mark, is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the link between the complainant’s
mark and the content advertised on the respondent’s website was obvious, the
respondent “must have known about the Complainant’s mark when it registered the
subject domain name”); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”).
The Panel
determines that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <laquintainns.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
September 15, 2005
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