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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Quinta Worldwide, L.L.C. v. Antonio J Billett

Case No. D2008-1516

1. The Parties

The Complainant is La Quinta Worldwide, L.L.C. of United States of America, represented by Lydecker, Lee, Behar, Berga & de Zayas, L.L.C., United States of America.

The Respondent is Antonio J Billett, of United States of America. The case record indicates that the Respondent’s surname was occasionally misspelled, as “Billet.” The registrar’s formal verification confirms the correct spelling of the Respondent’s name. The Panel is satisfied that no prejudice to the Respondent has occurred as a result of such misspellings.

2. The Domain Name and Registrar

The disputed domain name <positivelylaquinta.com> is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2008, by email, and then in hardcopy three days later. On October 6, 2008, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the domain name at issue. On October 8, 2008, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent - “Antonio J Billett” - is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2008.

On October 16, 2008 (Geneva, Switzerland time), with notification of the commencement of the proceedings, the Respondent sent an email message to the Center, stating: “My previous employer requested the name for use as part of their project. Since then neither my previous employer nor I have any use or need for the domain name. You may, after the proceedings are completed, transfer the domain name to the requestor if so you conclude.” On the same date, the Center acknowledged receipt of the Respondent’s message, sent to both parties. Also on October 16, 2008, counsel for the Complainant transmitted a message to the Respondent, saying, “If you agree to transfer the domain name, we will dismiss the proceedings. If you agree, I will suspend the proceedings pending the completion of the transfer.” Receiving no response from the Respondent, counsel sent another message on October 22, 2008: “If we do not hear from you, we will continue to prosecute this matter before the World Intellectual Property Organization.” Also on October 22, 2008, the Respondent re-sent to the Center its previous email message of October 16.

Acknowledging receipt of the Respondent’s message of October 22, 2008, the Center notified the Respondent and the Complainant’s counsel that “the Complainant may wish to consider requesting a suspension of the proceedings to explore a possible settlement,” and provided information on the details of a transfer of a domain name while a case is suspended. On October 27, 2008, counsel for the Complainant informed the Center that the Respondent had not responded to the Complainant’s correspondence. The Center acknowledged receipt of the counsel’s message, with a copy to the Respondent, stating, inter alia, that the Center is not involved in settlement negotiations, and reminding of the due date for the Response if the parties did not wish to suspend the case in order to reach a settlement. On October 29, 2008, the Respondent sent a message to the Center, stating, “In multiple occasions I have informed this panel and everyone involved that my previous employer requested the name for use as part of their project. I never had nor do I have any use or need for the domain name in question.” On November 4, 2008, the Center acknowledged receipt of the Respondent’s message, with a copy to the Complainant’s counsel, reminding again of the deadline for the Response, and requesting both parties to copy the other side on all email communications.

There was no request for a suspension of the proceedings, and no settlement by the parties. The Respondent did not submit its Response. Accordingly, the Center notified the Respondent’s default on November 7, 2008.

The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on November 24, 2008. 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 Background

The Complainant owns and operates hotels in the United States and Canada under the “La Quinta” name. It has received registrations from the U.S. Patent and Trademark Office, for various marks that include the LA QUINTA designation, for “hotel/motel services,” including: a stylized form of LA QUINTA (on August 26, 1969); LA QUINTA (December 27, 1977); and LA QUINTA INN plus design (June 21, 1994). Publicly available registration documents indicate that the Complainant first used the mark in commerce in 1968. The Complainant also has registration of the LAQUINTA mark in Canada and Mexico, and various countries in South America, Europe, and Asia. In addition, the Complainant has registered and currently operates domain names that include the “laquinta” term, including: <laquinta.com> (registered on June 15, 1995); <laquintainn.com> (February 21, 1999); <orlandolaquinta.com> (March 9, 2001); <laquintareturns.com> (June 6, 2003); and <laquintafranchise.com> (October 27, 2003).

According to the registrar’s verification, the Respondent registered the disputed domain name <positivelylaquinta.com> on March 17, 2007.

5. Parties’ Contentions

A. Complainant

In brief, the Complainant argues that: (i) the Respondent’s domain name is identical or confusingly similar to a mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith.

Regarding the first element, the Complainant states that through its “longstanding use and establishment of the trademark �LaQuinta’ for hotel and motel services worldwide,” the Complainant has “developed a family of international trademark rights in . . . the name �La Quinta’.” Complaint at 9. Moreover, the Complainant argues that the disputed domain name, which wholly incorporates the Complainant’s mark, is “similar, if not identical, to the family of �La Quinta’ marks.” Id. at 9, 11.

With respect to the second element, the Complainant contends that the Respondent “has made no legitimate use of the domain name” since its registration, “and could not possibly use the domain name legitimately in the future.” Complaint at 12. By failing to use the domain name after holding it for a year, the Complainant asserts, the “Respondent is tarnishing La Quinta’s trademark.” Id. at 15.

Within this discussion, the Complaint also states: “[T]he Respondent has made NO assertions of any rights in <positivelylaquinta.com>, and Respondent has -- at all times -- indicated that he is willing to transfer the name. He simply has failed to follow up in regards to our request to transfer. As such, <positivelylaquinta.com> should be transferred to the Complainant.” Complaint at 14.

Elaborating on the bad faith element, the Complainant asserts that the Respondent’s incorporation of the Complainant’s mark, intent to capitalize on the Complainant’s goodwill in the mark, and passive holding of the disputed domain name amount to evidence of registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

Under paragraphs 5(e) and 14(a) of the Rules, the Panel may decide the dispute based on the Complaint. The Panel may also draw appropriate inferences from such default, according to paragraph 14(b) of the Rules.

6. Discussion and Findings

Initially, the Panel must note the Respondent’s apparent willingness to transfer the domain name to the Complainant, as indicated by his correspondence to the Complainant before the commencement of the proceedings, and to the Center subsequently. In response to the cease and desist communication from the Complainant’s counsel, the Respondent stated in email correspondence on August 19, 2008, that the domain name was acquired for use by a television station, and that if the station did not want to transfer ownership, “I can do so. Please forward me your request and include the instructions for the transfer in order to promptly comply with your request.” Complaint, Annex 9. Further correspondence between the parties addressed logistical details to effect the transfer. In response to counsel’s request for prompt action, the Respondent stated in his message of August 21, 2008: “I have been working with you up to this point. I consider your pressure unreasonable and unnecessary. I am under no obligation to obey any of your time lines. As I said, I have no problem with your request.” Id.

When the Complainant filed the Complaint, the Respondent contacted the Center, stating that his previous employer requested the domain name for use as part of its project, but that since then, he has “no use” for the domain name.

Given the Respondent’s statements, it is not clear to the Panel why a transfer of the domain name was not completed. The transfer would have made unnecessary the Center’s appointment of a panel, and further deliberations.

Panelists in previous cases have had opportunity to address the effect to be given to a respondent’s stated willingness to transfer the domain name. For example, in Efficient Networks, Inc. v. Speedstream, WIPO Case No. D2000-1136, after the commencement of the proceeding, counsel representing the respondent notified the Center of its agreement to transfer the domain name to the complainant. As here, there was correspondence regarding the possibility of a suspension of the proceeding. The respondent’s counsel repeated that the respondent would not contest the transfer of the domain name; ultimately, however, the respondent did not execute a transfer agreement, and failed to submit a response. There, the panel wrote, “In these circumstances the Panel will order that transfer without making any findings.” Id. at 3.

In Nortel Networks Limited and Nortel Networks NA Inc. v. FastWrite Asia Co. Ltd. and FastWrite, WIPO Case No. D2000-1119, the respondents did not file a response, but (by letter from the respondents’ management) agreed to transfer the disputed domain names to the complainants. Ultimately, the panelist had “no difficulty in finding that all three of the elements set out in paragraph 4(a) of the Policy have been proved to be present in this case.” Id. at 3. The panelist also noted that “in view of the Respondents’ consent to transfer it is unnecessary to particularize how the elements of paragraph 4(a)(ii) and (iii) of the Policy have been proved to the Panelist’s satisfaction.” Id.

As this Panel has noted in a previous case, Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190, where a respondent consents to a transfer of the disputed domain name, there may be circumstances where it is appropriate for the panel to order the transfer summarily, without further elaboration. Perhaps in such circumstances, the approach taken by the panelists in Efficient Networks, Inc. and Nortel Networks Limited and Nortel Networks NA Inc. – issuing an order of transfer without findings, or making findings without particularized explanation – is plausible.

In the present case, the Respondent’s statements to the Complainant’s counsel indicate a willingness to cooperate in the transfer of the domain name. One can only speculate as to why the actual transfer did not take place. After the proceedings commenced, the Respondent informed the Center in an email message that he had no use for the domain name. Yet the very next sentence in the Respondent’s message is more ambiguous and conditional: “You may, after the proceedings are completed, transfer the domain name to the requestor if so you conclude.” (emphasis added). The Respondent’s statements to the Center fall short of a consent to transfer the disputed domain name.

The case record indicates that: the Respondent did not reach a settlement with the Complainant, when such settlement appeared possible; the Center informed the parties that it would proceed with the appointment of a panel (thereby resulting in a decision under the Policy) if there was no agreement to suspend the proceedings pending settlement negotiations; there was no such agreement by the parties; and the Center reminded the parties of the deadline for the Respondent’s Response, and then notified of the Respondent’s default. At this stage in the proceeding, the Panel must decide the case on the merits.

In order to prevail, the Complainant must prove the three elements specified in paragraph 4(a) of the Policy:

(i) [the] domain name is identical or confusingly similar to a trademark or service mark in which the [C]omplainant has rights; and

(ii) [the Respondent has] no rights or legitimate interests in respect of the domain name; and

(iii) [the] domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The case record indicates ample evidence to demonstrate that the Complainant has rights in its mark, LAQUINTA. The Panel determines that the disputed domain name <positivelylaquinta.com> is confusingly similar to the Complainant’s LAQUINTA mark. The insertion of the “positively” prefix before the mark does not defeat confusing similarity. See CELLEX-C International Inc. v. Jaye Pharmacy and Absolute Cellex C, WIPO Case No. D2003-0423 (finding that disputed domain name <absolutecellexc.com> is identical or confusing similar to Complainant’s mark, “CELLEX-C”). The Panel agrees that the predominant portion of the disputed domain name <positivelylaquinta.com> is “laquinta,” and that the “positively” prefix merely reinforces the prominence of this term.

The Complainant has demonstrated the first element.

B. Rights or Legitimate Interests

The Complainant has met its initial burden to make a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the domain name. Thus, the burden shifts to the Respondent to demonstrate such rights or legitimate interests. Decathlon v. Tariq Ghafoor, WIPO Case No. D2007-1256; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. With the Respondent’s default, the Panel searches the case record to see if there is any evidence demonstrating the Respondent’s rights or legitimate interests in the <positivelylaquinta.com> domain name. The Panel is at a loss to ascertain any circumstances that would indicate such rights or interests, as described paragraph 4(c) of the Policy, or otherwise.

The second element is established.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the “domain name has been registered and is being used in bad faith.” Paragraph 4(b) provides descriptions of four separate circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” In the present case, there is no evidence to suggest that the Respondent: (i) registered or acquired the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant and owner of the mark, for valuable consideration in excess of out-of-pocket costs related to the domain name; (ii) registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, much less that he engaged in a pattern of such conduct; (iii) registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such website.

It should be noted that the circumstance described in paragraph 4(b)(iv) contemplates active use of the domain name, which is not present in this case. On August 19, 2008, Internet users who resorted to the <positivelylaquinta.com> domain name landed at a site that read, “This site is under construction.” As of the filing of the Complaint, the domain name was inactive and resolved to a site that said, “Sorry, �www.positivelylaquinta.com’ does not exist or is not available.” Complaint, Annex 7. As of this date, the domain name does not resolve to a site at all.

Importantly, examples of evidence to demonstrate bad faith as described in paragraph 4(b) are not exhaustive. Indeed, bad faith in registration and use may be shown by other circumstances not enumerated in paragraph 4(b). The Panel determines that the requisite bad faith element under 4(a)(iii) is present in this case, and is guided by panel decisions in two decisions with parallel facts relating to the bad faith component – Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, which in turn relied on the oft-quoted decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In all three cases, as here, the Respondent was not actively using the domain name; rather, it was engaged in a “passive holding” of the domain name. In addition, the panels in the three decisions found bad faith in registration and use, considering the totality of the circumstances, though no evidence of any of the four circumstances described in paragraph 4(b) was present.

In the present case, the following factors indicate bad faith in registration and use.

- Given the Complainant’s long use of the LAQUINTA marks for hotel and motel services throughout the United States, the Respondent was quite likely aware of the Complainant at the time he registered the domain name.

- The Respondent probably registered the domain name because of its association with the Complainant, its reputation, and its business.

- The Panel may draw the inference that the Respondent in some way hoped to capitalize on the reputation of the Complainant.

- The Respondent intentionally registered the domain name <positivelylaquinta.com>, wholly incorporating the Complainant’s widely recognized mark for hotel and motel services.

- It is difficult for the Panel to conclude that the Respondent did not know of the Complainant’s mark, or that the Respondent selected the domain name by chance. There is no evidence whatsoever of the Respondent choosing the name for any legitimate reason.

- The Respondent failed to file a response, thereby declining the opportunity to explain its interest or right in, or use of, the domain name.

- The Respondent’s use of the domain name is in the form of “passive holding,” where the domain name does not resolve to an actual website.

- As in Ladbroke Group Plc, the present case indicates that “any attempt to actively use [the domain name] would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of the registrant’s web site among users of the Internet who would inevitably be led to believe that such a www site would be owned by, controlled by, established by or in some way associated with Complainant.” Ladbroke Group Plc, at 8.

- It is not possible for the Panel to “conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, or an infringement of the Complainant’s rights under trademark law.” Id.

In these circumstances, the Panel concludes that the bad faith element in paragraph 4(a)(iii) is present.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <positivelylaquinta.com> be transferred to the Complainant.

Ilhyung Lee
Sole Panelist

Dated: December 8, 2008