WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION La Quinta Worldwide, L.L.C. v. Texas International Property Associates Case No. D2009-1436 1. The Parties
The Complainant is La Quinta Worldwide, L.L.C. of Las Vegas, Nevada, United States of America, represented by Lydecker, Lee, Behar, Berga & DeZayas, LLC, United States.
The Respondent is Texas International Property Associates of Dallas, Texas, United States. 2. The Domain Names And Registrar
The disputed domain names and (collectively the “Disputed Domain Names”) are registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2009. On October 26, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the Disputed Domain Names. On October 27, 2009, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent 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” or “UDRP”), 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 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2009.
The Center appointed Andrew J. Park as the sole panelist in this matter on December 3, 2009. 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
Complainant La Quinta Worldwide, L.L.C. has owned and operated hotels under the trademarked “La Quinta” name since 1968. Complainant owns, operates, manages and franchises over 65,000 “La Quinta” hotel rooms, employs over 9000 “La Quinta” employees, and owns, operates, manages and franchises over 700 hotels in forty two of the United States, and in Canada and Mexico. Complainant is the registered owner of the following United States trademark registrations and applications, all of which have been registered for hotel/motel services in International Class 43 unless otherwise specified:
LA QUINTA, Reg. No. 0875802, registered on August 26, 1969;
LA QUINTA, Reg. No. 1080641, registered on December 27, 1977;
LA QUINTA INN, Reg. No. 1823440, registered on February 22, 1994;
LA QUINTA INN, Reg. No. 1841032, registered on June 21, 1994;
LQ LA QUINTA INN & SUITES, Reg. No. 2298693, registered on December 7, 1999;
LQ LA QUINTA INN & SUITES, Reg. No. 2300509, registered on December 14, 1999;
LA QUINTA ELINK, Reg. No. 2575959, registered on June 4, 2002, in class 16 for hotel and motel newsletters;
LA QUINTA RETURNS, Reg. No. 2832831, registered on April 13, 2004;
EVERY LA QUINTA EVERY TIME, Reg. No. 2855754, registered on June 22, 2004;
LQ LA QUINTA INN & SUITES, Reg. No. 3064031, registered February 28, 2006;
LA QUINTA INN, Serial No. 76646437;
LA QUINTA, Serial No. 76644842;
LA QUINTA, Serial No. 76644841;
LA QUINTA INN & SUITES, Serial No. 76646890;
LA QUINTA INN, Serial No. 77027904 in Class 43 for hotel and motel services and Class 35 for provision of facilities for meetings, conventions, and exhibitions;
LA QUINTA INN, Serial No. 77122449 in Class 43 for hotel and motel services and Class 35 for provision of facilities for meetings, conventions and exhibitions;
LA QUINTA INN & SUITES, Serial No. 77122413 in Class 43 for hotel and motel services and Class 35 for provision of facilities for meetings, conventions, and exhibitions;
LA QUINTA INN & SUITES, Serial No. 77027921 in Class 43 for hotel and motel services and Class 35 for provision of facilities for meetings, conventions and exhibitions; and
LA QUINTA UNIVERSITY, Serial No. 76598964 in Class 41 for educational services.
Complainant has registered at least the following generic top-level domains consisting of or incorporating the trademark LA QUINTA and/or its abbreviation:
;
;
;
;
;
; and
.
Respondent registered the domain in June 2005 and registered in December 2005. Respondent is located in Dallas, Texas, which is the location of Complainant's headquarters. Complainant wrote to Respondent on September 16, 2009 requesting transfer of the disputed domains and Respondent did not respond. 5. Parties' Contentions A. Complainant
Complainant argues that: (i) the Respondent's Disputed Domain Names are 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 Disputed Domain Names; and (iii) the Disputed Domain Names were registered and are being used in bad faith. Regarding the first element, the Complainant states that due to 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 and to the name ‘La Quinta' for hotel and motel services.” Complaint at 7. Further, Complainant argues that the Disputed Domain Names wholly incorporate Complainant's “La Quinta” trademark in its entirety. Complainant also contends that the “addition of ‘rewards' and ‘sedona' after Complainant's name does not distinguish the Disputed Domain Names from Complainant's name and brand”. In short, Complainant contends that Respondent has registered domain names confusingly similar in sight and sound to Complainant's trademark and in association with the Disputed Domain Names is marketing Complainant's product without license or permission to do so.
Regarding the second element, Complainant contends that there is no evidence of Respondent's use, or preparations to use the Disputed Domain Names or corresponding domain names in connection with a bona fide offering of goods or services. Rather, Complainant points out that the Disputed Domain Names are “merely parking spaces for Respondent, where ‘Sponsored Listings' direct the user to Complainant's website and other third party sites.” Complaint at 9-10. Complainant also asserts that since registering the disputed domains more than forty six and fifty two months ago, respectively, Respondent has made no legitimate use of the Disputed Domain Names. Id. at 10. Complainant further contends that Respondent is not commonly known by or affiliated with the Disputed Domain Names and offers no services and makes no reference to a brand of its own on the websites associated with the Disputed Domain Names. Id. Rather, Complainant argues that Respondent is using the Disputed Domain Names to create a false sense of association, affiliation, or sponsorship with Complainant when Respondent has never been authorized by Complainant to do so. In particular, Complainant points out that Respondent's website “falsely suggests an affiliation with Complainant, links to Complainant's site without permission to do so, and also contains links to hotel reservation websites where competitors of Complainant can be found.” Complaint at 10. Thus, Complainant contends that Internet users who search for Complainant's official website can be easily diverted to Respondent's sites and directed to sites of Complainant's competitors offering hotel services. Complainant asserts that this is opportunistic use of Complainant's name and goodwill and that Respondent's failure to make any use of the Disputed Domain Names within the approximately four years since their registration evidences lack of a legitimate use.
In reference to the third element, Complainant contends that Respondent, by linking to Complainant's website from websites associated with the Disputed Domain Names, “was clearly aware of Complainant and registered the Disputed Domain Names for the purpose of profiting from Complainant's name and goodwill.” Complaint at 14. Complainant contends that the fact that its trademarks are “widely known” in the hotel industry leads to the conclusion that Respondent registered and used the Disputed Domain Names with actual knowledge of Complainant's trademark rights. Complainant also contends that Respondent has “an extensive history of cybersquatting activity,” and that there have been 109 Domain Name Complaints filed with WIPO against Respondent, and 157 Domain Name Complaints filed with the National Arbitration Forum against Respondent. Complainant contends that these other domain name disputes involving Respondent “evidence a pattern of registering domain names” with intent to attract for commercial gain Internet users to websites by creating a likelihood of confusion with the Complainant's trademarks, as to source, sponsorship, affiliation or endorsement of its websites. Finally, Complainant contends that Respondent's parking of the disputed domains is in and of itself sufficient to establish bad faith registration and use under the UDRP, and that there is no “plausible reason for Respondent's selection of the Disputed Domain Names other than as a deliberate attempt to profit from the confusion generated with Complainant's ‘La Quinta' trademark.” Complaint at 17. B. Respondent
Respondent did not reply to Complainant's contentions. Accordingly, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from Respondent's default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. 6. Discussion And Findings
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent's domain name: (i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that Respondent has no rights or legitimate interests in the Disputed Domain Names; and (iii) that Respondent's Disputed Domain Names have been registered and are being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(iii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. A. Identical or Confusingly Similar
The case record contains ample evidence to demonstrate Complainant's rights in its LA QUINTA trademark. The Panel determines that the Disputed Domain Names are confusingly similar to Complainant's LA QUINTA mark. The insertion of the terms “rewards” and “sedona” following 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 is identical or confusing similar to Complainant's mark, “CELLEX-C”). The Panel agrees that the dominant portion of the Disputed Domain Names is “laquinta,” and that the generic identifier “rewards” and the geographic identifier “sedona” merely exacerbate confusion given that Complainant offers a “rewards program” to its hotel guests (Complaint at 8), and that Sedona is commonly known as a United States resort destination where tourists might naturally presume Complainant is located. Complainant's authority on this issue is persuasive. See Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537 (use of the word “rewards” in combination with the term “” would likely be associated by Internet users with Complainant and its banking and financial services); Six Continental Hotels, Inc. v. GBT Domains For Sale and Lease, WIPO Case No. D2008-1309 (ordering transfer of the domain ). Accordingly, the Panel finds that Complainant has demonstrated the first element. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Names by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its LA QUINTA mark. There is also no evidence that Respondent (Texas International Property Associates) is commonly known by the Disputed Domain Names, and thus paragraph 4(c)(ii) of the Policy in inapplicable in this case. Moreover, Respondent's use of a parking service, presumably to generate revenue because of the association of the Disputed Domain Names with Complainant's LA QUINTA trademark, is trading on Complainant's goodwill and cannot constitute fair noncommercial use or a bona fide offering of goods or services. See Verisign Inc. v. Bin g Glu / G Design,WIPO Case No. D2007-0421; Rich Products Corporation v. Cynthia Kirk,WIPO Case No. D2007-0871.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some right or legitimate interest in respect of the Disputed Domain Names. Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the record, the Panel finds no circumstances that would indicate such rights or interests, as described paragraph 4(c) of the Policy, or otherwise. Complainant has therefore prevailed on this part of its Complaint. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Names by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti Casey, WIPO Case No. D2007-0555; Patrick Pawlicki v. The Plastiform Company,WIPO Case No. D2007-1206. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Accepting all facts alleged in the Complaint as true, the Panel finds that Complainant has shown registration and use in bad faith by Respondent.
Given Complainant's long and widespread use of its various LA QUINTA trademarks for hotel and motel services throughout the United States and elsewhere in North America, Respondent was quite likely aware of Complainant at the time it registered the Disputed Domain Names. This is particularly likely since one of the Disputed Domains Names apparently previously resolved to Complainant's own website. Accordingly, in the absence of evidence to the contrary, the Panel presumes that Respondent registered the Disputed Domain Names because of their association with Complainant, its reputation, and its business. Respondent's registration of domain names directly reflecting Complainant's LA QUINTA trademark, and then using them to attract Internet users to its website and to divert users to other websites for business services similar to those of Complainant while presumably deriving such commercial value from Complainant's mark is a classic example of bad faith registration and use under paragraph 4(a)(iii) of the Policy. See Am. Online, Inc. v. Tencent Communications Corp., NAF Claim No. FA 93668 and Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101. The Panel thus concludes that by using the Disputed Domain Names in connection with sponsored links, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
Further, as an operator of a website that links to hotel reservation services that compete directly with Complainant, Respondent is competing with Complainant, itself a well known hotel and resort service. Respondent's registration and use of the Disputed Domain Names thus amounts to disruption of the business of a competitor and thus to bad faith registration and use of these domain names as set forth under Paragraph 4(b)(iii) of the Policy.
Finally, the Panel concludes that Respondent has registered the Disputed Domain Names in order to prevent Complainant from reflecting its trademark in a corresponding domain name under Paragraph 4(b)(ii) of the Policy. As a prior panel indicated with respect to this particular Respondent, “[i]f such a domainer paid no attention whatsoever to whether its registrations might be identical to third party marks, the domainer's practice might well support a finding that it has been engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.” Legal Rights Defenders, Inc. v. Texas International Property Associates, WIPO Case D2009-0284 (emphasis added). More recently, a WIPO UDRP panel conclusively determined that this Respondent has “engaged in a pattern of conduct whereby it registers domain names that are known trade marks or are confusingly similar to known trade marks in order to extract revenue from such domain names.” Les Parfumeries Fragonard v. Texas International Property Associates,WIPO Case No. D2009-0835. It went on to state that: “in the case of some persons involved [in] the secondary market in domain names, the term ‘cybersquatter' is applied unfairly. However, in this case, the term ‘cybersquatter' accurately describes the Respondent.” Id. Based on the evidence presented, this Panel concurs with the Panel in Les Parfumeries and finds that the Disputed Domain Names have been registered and are being used in bad faith by the Respondent. 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 names and be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Dated: December 16, 2009
Full & Egal Universal Law Academy