WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION La Quinta Worldwide, L.L.C. v. Seoul Gil Case No. D2010-0108 1. The Parties
1.1 The Complainant is La Quinta Worldwide, L.L.C. a limited liability company based in the United States of America (the “Complainant”), represented by Lydecker, Lee, Berga & de Zayas, L.L.C., United States of America.
The Respondent is Seoul Gil of Republic of Korea (the “Respondent”). 2. The Domain Name and Registrar
2.1 The disputed Domain Name is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2010. On January 25, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On January 26, 2010, the Registrar 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”).
3.2 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 January 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 17, 2010.
3.3 The Center appointed Ike Ehiribe as the sole panelist in this matter on March 1, 2010. 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
4.1 The Complainant, La Quinta Worldwide, L.L.C. a company based in the United States of America owns, operates and manages well over 700 hotels in the United States, Canada and Mexico under its trademark name LA QUINTA. The Complainant is the owner and holder of the trademark LA QUINTA which is registered in the United States and in well over fifty other countries worldwide as evidenced by registration certificate 875,802 of August 26, 1969 and other subsequent registration certificates in the United States and in other countries abroad.
4.2 The trademark LA QUINTA is registered by the Complainant both in the United States and abroad, for hotel and motel services and where specified for the provision of facilities for meetings, conventions and exhibitions. The Complainant has in addition, since 1995, registered domain names in connection with its services such as: , , and .
4.3 The Respondent according to the WhoIs database registered the disputed Domain Name on April 17, 2009. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the disputed Domain Name, is confusingly similar to the Complainant's trademark, in so far as, the disputed Domain Name wholly incorporates the Complainant's trademark LA QUINTA in its entirety. The Complainant further asserts that the trademark LA QUINTA and the disputed Domain Name create the same overall impression since the spelling of the key terms is identical; and the pronunciation of the key names are identical, and therefore, the disputed Domain Name is likely to be confused with the Complainant's trademark.
5.2 The Complainant submits that the addition of the word “motels” or the generic top level domain designation “.info” does nothing to distinguish the Complainant's trademark from the disputed Domain Name. The Complainant in this regard relies on a number of cases, including the cases of Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022 (where the panel in that case found that the addition of the descriptive words “ fashion” or “cosmetics” to the domain names in question did little to dispel the confusing similarity as the “Complainant has for several decades successfully been using its invoked trademarks primarily in the areas of fashion and cosmetics”) and Nexxt Development Corp. v. Richard Spence,WIPO Case No. D2008-0530 (where the panel found and held that the word “info” is to be disregarded because it is merely a functional component of the domain name in question).
5.3 The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name as no legitimate use has been made since its registration in April 2009 nor can the Respondent possibly make legitimate use of the disputed Domain Name in the future. The Complainant relies on a number of cases including the decision in Volvo Trademark Holding AB v. Nicklas Uvelov,WIPO Case No. D2002-0521. The Complainant asserts further, that given the Complainant's extensive trademark registrations and use of the trademark for close to forty years, under no circumstances will the Respondent be able to establish any form of legitimate interest or bona fide use by way of offering goods or services. The Complainant submits further that since the Respondent's website is inactive, the Respondent is only diverting potential customers away from the Complainant's website due to the similarity between the Complainant's trademark and the disputed Domain Name.
5.4 With regards to registration and use in bad faith, the Complainant submits that the Respondent's registration of a domain name similar and identical to the Complainant's trademark is prima facie evidence of bad faith registration and use, particularly, where the Complainant's trademark is so widely known and the Respondent ought to have been aware of the Complainant's trademark actually or constructively. The Complainant in this regard cites the cases of Digi International Inc. v. DDI Systems, NAF Claim No. FA0209000124506 (Oct 24 2002) and LaSalle Bank Corporation v. Domain Active Pty. Ltd., NAF Claim No. FA0404000257756 (June 28, 2004) where the panel in both cases found that there is a legal presumption of bad faith registration and use where the respondent reasonably ought to have known of the complainant's trademarks, actually or constructively.
5.5 The Complainant points out that since the Complainant has a registered trademark in the Republic of Korea (“Korea”), where the Respondent resides, the Respondent cannot deny knowledge of the Complainant's rights in the trademark LA QUINTA in the hotel industry. The Complainant therefore concludes that there is no plausible reason for the Respondent's selection of the disputed Domain Name except to deliberately benefit from the confusion generated from the similarity between the disputed Domain Name and the Complainant's trademark, as was found and held by the panel in Mastercard International Incorporated v. Unicorn Multi-Media, Inc.,WIPO Case No. D2007-0688.
5.6 The Complainant requests that the disputed Domain Name be transferred to it. B. Respondent
5.7 The Respondent did not reply to the Complainant's contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw inferences as it considers appropriate from the Respondent's default. 6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights of legitimate interests in the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in the proceedings. A. Identical or Confusingly Similar
6.3 The Panel finds on the facts as submitted by the Complainant and unchallenged by the Respondent that the disputed Domain Name is confusingly similar to the well-known international trademark LA QUINTA owned exclusively by the Complainant. On a careful comparison of the trademark with the disputed Domain Name, herein, it is abundantly evident that the disputed Domain Name incorporates the Complainant's trademark entirely. This Panel accepts, just as the Complainant contends, that the addition of the word “motels” and the suffix “info” does not sufficiently distinguish the disputed Domain Name from the Complainant's trademark. The Panel is further satisfied with the Complainant's contention that the relevant terms in the disputed Domain Name and the trademark are so identical in sight and sound that the two are most likely to be confused by Internet users and visitors to the Complainant's websites.
6.4 This Panel in support of the finding above relies on the recent decision of F. Hoffmann-La Roche AG v. PrivacyP, Domain Admin and Mark Sergijenko,WIPO Case No. D2007-1854 where it was held that the addition of other descriptive or non descriptive words to a complainant's trademark by a user of that trademark does not enable that user to avoid the confusing similarity arising from appropriating entirely the Complainant's trademark. The Panel also accepts that the other cases cited by the Complainant in this regard such as Parfums Christian Dior, supra and Nexxt Development Corp., supra amongst others are quite relevant and emphasizes the point that essential or virtual identity is sufficient to establish confusing similarity within the ambit of the Policy.
6.5 Accordingly, the Panel finds that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant's trademark in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 The Panel finds as a fact that the Respondent has failed to provide any evidence or circumstances required to establish that it has rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. The Complainant submits tersely, that the mere registration of a domain name, without more, does not in itself establish rights or legitimate interests for the purpose of the Policy and contends further that the failure to use the website associated with the disputed Domain Name for any legitimate business or enterprise or for anything else since registration is further overwhelming evidence of lack of rights or legitimate interests. The Complainant's additional or alternative contention in this regard, is given the Complainant's extensive worldwide trademark registrations and use of the trademark for close to forty (40) years, the Respondent will never be able to establish to the required standard the existence of any such rights or legitimate interests.
6.7 This Panel finds that these are quite weighty and well founded assertions substantiated in part, by the number of worldwide trademark registrations submitted by the Complainant, which the Respondent has not or is incapable of refuting. The Panel accordingly, draws adverse inferences from the Respondent's failure or inability to do so. The Panel also finds the Complainant's reliance on the case of Volvo Trademark Holding AB, supra to be most relevant and apt in the circumstances. The panel in this case found that where a respondent had made no bona fide use of the disputed domain name and a complainant asserts that the respondent has no rights or legitimate interests in the domain name, then the burden of proof of establishing that such a right exists shifts onto the respondent. This is a burden which in this case the Respondent has failed or is unable to discharge.
6.8 The Panel therefore finds it established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.9 On the question of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Name in bad faith. The Panel has taken into account a number of factors in arriving at this conclusion. First of all, the Panel finds that the Respondent knew or ought to have known that the Complainant has held and owned exclusive worldwide rights in the trademark LA QUINTA dating back to around 1969. Secondly, since the Respondent is a resident in Korea where the Complainant also has registered trademark rights, the Respondent cannot be heard to be suggesting that the worldwide reputation of the Complainant's trademark rights were unknown in Korea. Thirdly, the Panel has also taken a negative view of the Respondent's contumelious failure or refusal to respond to letters and emails dispatched to the Respondents contact details by those representing the Complainant. Fourthly, just as the Complainant asserts, the Respondent's decision to place the word “motels” beside the Complainant's mark LA QUINTA is indicative of the Respondent's knowledge of the existence of the Complainant's worldwide trademark rights and ensuing popular reputation in the hotels and motels industry. Finally, the Panel finds as a fact that the Respondent only registered the disputed Domain Name for the sole reason of attempting to benefit from the likelihood of confusion arising from the similarity between the Complainant's trademark and the disputed Domain Name.
6.10 In arriving at the conclusion in paragraph 6.9 above, the Panel draws support from a number of cases cited by the Complainants such as Mastercard International Incorporated, supra where the panel found bad faith registration and use established due to no other reason but to profit from confusion arising from similarity between the trademark and the domain name in question. See also the case of LaSalle Bank Corporation, supra which follows the earlier case of Digi International Inc., supra to hold that there is a legal presumption of bad faith, where the respondent reasonably should have been aware of the complainant's trademark rights actually or constructively.
6.11 The Panel therefore finds that the Complainant has established the finding of bad faith use and registration within the ambit of paragraph 4(b)(iv) of the Policy. 7. Decision
7.1 For all these reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Name be transferred to the Complainant forthwith.
Ike Ehiribe
Sole Panelist
Dated: March 16, 2010
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