WorldLII Home | Databases | WorldLII | Search | Feedback

Generic Top Level Domain Name (gTLD) Decisions

You are here:  WorldLII >> Databases >> Generic Top Level Domain Name (gTLD) Decisions >> 2005 >> [2005] GENDND 114

Database Search | Name Search | Recent Decisions | Noteup | LawCite | Help

La Quinta Worldwide, LLC v. JNPR Management [2005] GENDND 114 (17 January 2005)


National Arbitration Forum

national arbitration forum

DECISION

La Quinta Worldwide, LLC v. JNPR Management

Claim Number:  FA0411000370924

PARTIES

Complainant is La Quinta Worldwide, LLC (“Complainant”), represented by William D. Raman, PO Box 685108, Austin, TX 78768-5108. Respondent is JNPR Management (“Respondent”), 54470 Bernkastel, Kues 53127, Germany.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <laquintamcallen.com>, registered with Onlinenic, Inc.

PANEL

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 29, 2004.

On November 24, 2004, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <laquintamcallen.com> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 December 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 2004 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@laquintamcallen.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On January 4, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <laquintamcallen.com> domain name is confusingly similar to Complainant’s LA QUINTA mark.

2. Respondent does not have any rights or legitimate interests in the <laquintamcallen.com> domain name.

3. Respondent registered and used the <laquintamcallen.com> domain name in bad faith.

B. Respondent failed to submit a response in this proceeding.

FINDINGS

Complainant has offered hotel and motel services under the LA QUINTA mark since at least as early as 1968. Complainant began its hotel and motel operations in the southwestern United States and currently has hotels or motels in more than thirty-five states, including a hotel in McAllen, Texas. Complainant has spent millions of dollars advertising and promoting its hotel and motel services under the LA QUINTA mark. Complainant holds numerous federal trademark registrations that incorporate the LA QUINTA mark, including U.S. Reg. No. 1,080,641 for LA QUINTA (issued December 27, 1977). Complainant also operates a website at the <laquinta.com> domain name.

Respondent registered the <laquintamcallen.com> domain name on June 22, 2004. The domain name resolves to a commercial website that provides pornographic material and links to other pornographic websites. Respondent is not authorized or licensed to use Complainant’s mark for any purpose.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the LA QUINTA mark through registration with the United States Patent and Trademark Office and through the use of the mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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. Respondent has the burden of refuting this assumption).

Respondent’s <laquintamcallen.com> domain name is confusingly similar to Complainant’s LA QUINTA mark. Respondent merely added the geographic term “McAllen,” a city in Texas where one of Complainant’s hotels is located, removed a space from the mark, and added the “.com” generic top-level domain. The addition of a geographic term and a generic top-level domain and the removal of a space do not sufficiently distinguish the disputed domain name from Complainant’s LA QUINTA mark under Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark and stating that "the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark); 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”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a response in this proceeding. Therefore, Complainant’s submission has gone unopposed and its arguments unrefuted. In the absence of a response, the Panel accepts as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Because Respondent has failed to submit a response, it has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the <laquintamcallen.com> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true).

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). The record reveals that Respondent’s domain name redirects unsuspecting Internet users to a pornographic website. The Panel infers that Respondent commercially benefits from the diversion of Internet users searching under Complainant’s mark to Respondent’s unrelated pornographic website. Respondent makes opportunistic use of Complainant’s mark in order to capitalize on the goodwill and fame associated with the LA QUINTA moniker; thus, Respondent fails to establish rights or legitimate interests in the <laquintamcallen.com> domain name. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Moreover, the fact that the disputed domain name, which is confusingly similar to Complainant’s LA QUINTA mark, resolves to a pornographic website is evidence that Respondent lacks rights or legitimate interests in the <laquintamcallen.com> domain name pursuant to Policy ¶ 4(a)(ii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

No evidence before the Panel suggests that Respondent is commonly known by the <laquintamcallen.com> domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the registrant of the disputed domain name is known as “JNPR Management” and is not known by the confusing second-level domain that infringes on Complainant’s LA QUINTA mark. Moreover, Respondent is not authorized or licensed to use Complainant’s mark for any purpose. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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").

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent uses a confusingly similar variation of Complainant’s LA QUINTA mark within the <laquintamcallen.com> domain name to ensnare unsuspecting Internet users. Respondent then redirects the users to a commercial website. The Panel infers that Respondent commercially benefits from this diversion. Such infringement is what the Policy was intended to remedy. Thus, the Panel finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of the <laquintamcallen.com> domain name, additional factors can also be used to support findings of bad faith. See 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”); see also 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.”).

The disputed domain name resolves to a pornographic website that is unrelated to services that Complainant offers under its LA QUINTA mark. Such tarnishing use of Complainant’s mark is itself evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

Respondent’s registration of the disputed domain name, which incorporates Complainant’s well-known registered mark and simply removes a space and adds the geographic term “McAllen,” the location of a hotel bearing Complainant’s mark, suggests that Respondent knew of Complainant’s rights in the LA QUINTA mark. Additionally, Complainant’s trademark registration, on file at the United States Patent and Trademark Office, gave Respondent constructive notice of Complainant’s mark. Thus, the Panel finds that Respondent chose the <laquintamcallen.com> domain name based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also 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 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 finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <laquintamcallen.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated: January 17, 2005


WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2005/114.html