WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION La Quinta Worldwide L.L.C. v. bo chu Case No. D2010-0113 1. The Parties
The Complainant is La Quinta Worldwide L.L.C. of Las Vegas, Nevada, United States of America, represented by Lydecker, Lee, Berga & de Zayas, L.L.C. of United States of America.
The Respondent is bo chu of shandong, of the Peoples' Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2010. On January 26, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 27, 2010, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 28, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 2, 2010. The Center verified that the amended 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 February 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 23, 2010.
The Center appointed Jon Lang as the sole panelist in this matter on March 8, 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
The Complainant is a substantial business, in operation since 1968. It owns and operates hotels under the ‘La Quinta' name, some 700 of them in the USA, Canada and Mexico. It employs over 9000 people.
The Complainant has a number of United States trademark registrations e.g. ‘La Quinta' (Reg No. 0875802, registered on August 26, 1969 as well as foreign registrations in over 50 countries. Moreover, it has registered a number of domain names e.g. and .
On September 22, 2009, the Respondent registered , the domain name in dispute (the Domain Name).
On November 18, 2009 and again on December 8, 2009 the Complainant requested a transfer of the Domain Name from the Respondent. Neither request met with a response. Prior to these requests, the Domain Name resolved to which contained a list of results or links, one of which was to the official web site of the Complainant but others to hotel discount web sites. It now does not.
Little is known about the Respondent as he has not taken part in these proceedings. 5. Parties' Contentions A. Complainant
The La Quinta name permeates the United States and international hospitality market and is synonymous with the Complainant's hotels, motels and inns. It is associated globally with the Complainant's business and is a famous trade mark worldwide.
The Complainant contends that the Domain Name is identical or confusingly similar to its La Quinta trade marks on which it spends considerable sums advertising and promoting.
The La Quinta name is recognizable in all the Complainant's marks. The Domain Name and trade mark are so similar that they are more than likely to be confused. The addition of the term “about” does nothing to remove this confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name.
There is no evidence to suggest a use of it in connection with a bona fide offering of goods or services. The Domain Name in the past has resolved to a site displaying links to the Complainant's official site but also to other hotel reservation sites (to the benefit of competitors of the Complainant), but this cannot be said to be a bona fide offering of goods or services.
The Respondent cannot legitimately be known as, or regarded as affiliated with the Complainant yet the Respondent is using the Domain Name to create a false sense of association, affiliation or sponsorship with the Complainant.
The Respondent is not making a legitimate noncommercial fair use of the Domain Name and there is no evidence of the Respondent's preparations to use the Domain Name in connection with a bona fide use.
Whilst the Domain Name is no longer being actively used by the Respondent, no evidence of legitimate use has been furnished by him.
The Complainant contends that the Domain Name was registered and is being used in bad faith.
The Respondent was aware of the Complainant when it registered the Domain Name and sought to profit from it as evidenced by its use with the ‘Super Result' service, which displayed links to the Complainant's official web site and links to other hotel reservation services from which it derived commission.
Despite the changed use by the Respondent, the effect of the Domain Name being held by the Respondent is a diversion of consumers seeking the Complainant's official site. Such passive holding can amount to bad faith use. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that the respondent has registered a domain name which is
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that he has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements. A. Identical or Confusingly Similar
Given that the name “La Quinta” comprises the dominant part of the Domain Name (being preceded by the generic term “about”), the Domain Name is clearly similar to the La Quinta trademark. In Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, it was said “Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”. The use of the word “about” immediately before “la quinta”, a widely known trademark, far from distinguishes the Domain Name from the trademark but rather could increase the scope for confusion for obvious reasons – the consumer may think “ah ha, this is the site where I will learn all about La Quinta”.
There is clearly a possibility, if not likelihood that the Internet user may be confused into thinking that the owner of the Domain Name is also the owner of the trademark to which it is similar, or at least that there is some form of association between the Respondent and the Complainant. The inclusion in the Domain Name of the word, “about” does nothing to reduce this confusion and may even add to the likelihood of confusion arising. For these reasons, the Panel finds that the Domain Name is confusingly similar to the LA QUINTA trademarks. B. Rights or Legitimate Interests
The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of that domain name. There must be something more. The Respondent is not authorized by or affiliated with the Complainant. But he could have tried to show he had rights to or legitimate interests in the Domain Name in other ways. For instance, he could have attempted to show that he is making a legitimate non commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers. The Respondent did not advance this (or any) argument and indeed, given the use the Respondent first made of the Domain Name, it could not be said that there has been legitimate non-commercial or fair use. (Indeed, in the absence of any contrary evidence, the Panel can only assume that the Respondent derived some commercial benefit from its use of the Domain Name). A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. The Respondent has not advanced this argument either. But in any event, it would be difficult to accept that promotion of competing commercial entities on a “Super Result” website to which a confusingly similar domain name resolves is a bona fide offering of goods or services.
In Drexel University v. David Brouda,WIPO Case No. D2001-0067 the Panel stated that “[r]ights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. The Respondent registered the Domain Name in September 2009. The fame of the Complainant's trademarks was well established by the time of registration. It would be difficult to accept that the Respondent did not know of the Complainant's trademarks particularly given the use to which the Domain Name was initially put i.e. to a site containing links to hotel discount sites. It would also be difficult to accept that the Respondent had a reason for registration beyond a desire to drive Internet users to that site.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. There is no evidence before this Panel to contradict or challenge the contentions of the Complainant. This Panel therefore finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name which, given the lack of a Response, has not been contradicted or challenged in anyway. The Panel therefore finds that this element too of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
It seems clear that the Respondent was aware of the Complainant and its trademarks when it registered the Domain Name. One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This appears to be the case here or at least it was prior to receipt by the Respondent of the letters seeking a transfer of the Domain Name. The fact that the Respondent now passively holds the Domain Name does not preclude a finding of bad faith use (as well as registration, both elements being required for the purposes of a finding in favour of a complainant under the Policy). The Domain Name, in the Panel's view, has clearly been used at some point after registration in a way that offends the Policy and it would be extremely unfair to complainants generally if, by stopping and starting impermissible use of a confusingly similar domain name in which a respondent has no legitimate rights, a respondent could defeat an otherwise perfectly proper complaint. In any event, even a passive holding of a domain name can be disruptive to a complainant, diverting Internet users looking for the complainant's official site down blind alleys. In all the circumstances, this Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 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 be transferred to the Complainant.
Jon Lang
Sole Panelist
Dated: April 2, 2010
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