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.
Complainant asserts rights in the LA
QUINTA INN mark through the following registrations with the USPTO.
Mark Reg. Date Reg. Number
Covered Services
LA QUINTA INN
(& Design) |
02-22-1994 |
1,823,440 |
Hotel and motel services |
LA QUINTA INN
(& Design) |
06-21-1994 |
1,841,032 |
Hotel and motel 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.
The Panel thus concludes that Complainant proved the second
element of the Policy.
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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