Complainant is La Quinta Worldwide, L.L.C. of Las Vegas, Nevada, United States of America, represented by Lydecker Diaz L.L.C., United States of America.
Respondent is H of Kent, Ohio, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2010. On September 1, 2010, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On September 2, 2010, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2010.
The Center appointed Ira S. Sacks as the sole panelist in this matter on October 12, 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
Complainant in this administrative proceeding is a limited liability company, which has owned and operated its hotels under its trademarked La Quinta name since 1968, for over forty-two (42) years. Complainant has over 65,000 “La Quinta” hotel rooms, employs over 9,000 “La Quinta” employees, and it operates and provides franchise to more than 500 hotels in 40 states in the United States and in Canada.
Complainant owns several federally registered trademarks, including the following registrations registered on the United States Principal Register:
Mark
Reg. No./Serial No.
Date of Registration (where provided)
La Quinta
0875802
August 26, 1969
La Quinta
1080641
December 27, 1977
La Quinta Inn
1823440
February 22, 1994
La Quinta Inn
1841032
June 21, 1994
LQ La Quinta Inn & Suites
2298693
December 7, 1999
LQ La Quinta Inn & Suites
2300509
December 14, 1999
La Quinta Elink
2575959
June 4, 2002
La Quinta Returns
2832831
April 13, 2004
Every La Quinta, Every Time
2855754
June 22, 2004
LQ La Quinta Inn & Suites
3064031
February 28, 2006
La Quinta Inn
76646437
La Quinta
76644842
La Quinta
76644841
La Quinta Inn & Suites
76646890
La Quinta Inn
77027904
La Quinta Inn
77122449
La Quinta Inn & Suites
77122413
La Quinta Inn & Suites
77027921
La Quinta University
76598964
In addition, Complainant asserts that it has foreign trademark registrations and applications in over fifty (50) countries throughout the world and that it has registered approximately two hundred (200) domain names in connection with its services that consist of or contain the LA QUINTA mark or variations thereof and has submitted a list of the registrations in an annex to the Complaint.
According to the concerned Registrar’s WhoIs database, Respondent in this administrative proceeding is H, with an address in Kent, Ohio, United States.
In the absence of any Response, there is little information available about Respondent except that it has used the disputed domain name as the address of a website that resolves visitors to another website – with which Respondent has no affiliation – which offers services in direct competition with Complainant’s business.
The disputed domain name was registered on November 25, 2009. 5. Parties’ Contentions A. Complainant’s Contentions
Complainant submits that on November 25, 2009, almost fourteen (14) years after Complainant registered the domain name in 1995 and forty (40) years after Complainant registered its first federal LA QUINTA trademark registration in 1969, Respondent registered the domain name (the “Domain Name”). On May 7, 2010, June 23, 2010, and on August 5, 2010, Complainant attempted to contact Respondent concerning the Domain Name at the email address listed with the Registrar. In response to these communications, Complainant received messages that these communications were undeliverable. Although providing false contact information is, in itself, grounds for domain name cancellation under the ICANN WhoIs Data Reminder Policy, Complainant continued in its efforts to contact Respondent to amicably resolve the issues surrounding Respondent’s use of Complainant’s trademark in the Domain Name. To this end, on August 5, 2010, Complainant mailed a copy of the correspondence to the mailing address listed publicly with the Registrar. To date, Complainant has received no response from Respondent concerning the Domain Name. Identical or Confusingly Similar
Complainant references its numerous trademark registrations and applications in over fifty (50) countries, as well as the many registered domain names and websites in connection with its hotels, motels, and inns, as set forth above. Based on this longstanding use and establishment of the LA QUINTA INN trademark for hotel and motel services worldwide, Complainant claims that it has developed a family of international trademark rights in and to the name LA QUINTA INN for hotel and motel services. See Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333 (C.A.Fed. 2001) (“A family of marks is a group of marks having a recognizable common characteristic ... [which] arises if the purchasing public recognizes that the common characteristic is indicative of a common origin of the goods.”). Complainant asserts that the common characteristic “La Quinta” is clearly recognizable in all Complainant’s marks, and the global purchasing public clearly recognizes “La Quinta” as indicative of Complainant’s hotels.
Complainant submits that the Domain Name wholly incorporates Complainant’s trademarked “La Quinta Inn” brand name in its entirety, which is sufficient to establish identity or confusing similarity for purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Complainant proceeds to define the phrase “confusingly similar” generally and references the Restatement of Torts, which sets forth several factors for comparison – including the overall impression created by the designations; pronunciation; translation of foreign words; and verbal translation of pictures; suggestions connotations or meanings of the designations – by which the degree of resemblance between the conflicting designations be analyzed. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:4 (4th ed.) (citing Motorola, Inc. v. Griffiths Electronics, Inc., 317 F.2d 397, 400, 137 U.S.P.Q. 551,554 (C.C.P.A. 1963)). Additionally, “[i]n the cybersquatting context, ‘confusingly similar’ must simply mean that the mark and the domain name are so similar in sight, sound or meaning that they could be confused.” Id., at § 25:78. Complainant asserts that in this case, (i) the trademarked LA QUINTA INN brand name and create the same overall impression; (ii) the spelling of the key terms are identical; (iii) the pronunciation of the key terms are identical; and (iv) the sounds are identical. The only difference is the addition of the term “Macedonia, OH” which refers to a hotel property owned and operated by Complainant in Macedonia, Ohio.
Moreover, Complainant points to previous panel findings of confusing similarity to a complainant’s name where the distinctive and dominant element of a domain name is a trademarked term; to which a generic element is simply added. See Sainsbury’s Bank Pic Company v. Owen Webster,WIPO Case No. D2007-1246 (); F. Hoffmann-La Roche AG v. AndrewZZZ,WIPO Case No. D2006-0357 (, and held confusingly similar to TAMIFLU mark). Here, too, Complainant insists, the Domain Name is confusingly similar to Complainant’s trademarks, as the term “La Quinta Inn” is clearly the dominant element of the Domain Name and “macedoniaoh” is, at best, merely a generic addition. Complainant advances, however, that “Macedonia, OH” is actually a geographical term, referring to a specific hotel property owned and operated by Complainant, which increases the similarity of Complainant’s mark with the Domain Name and thus strengthens the likelihood of confusion, as an affiliation between Complainant and the Domain name is suggested. See Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658 (). Furthermore, Complainant points to prior panel rulings that the addition of a geographic term after a hotel trademark in its entirety creates a domain name that is confusingly similar to the hotel trademark. See La Quinta Worldwide, LLC v. Texas International Property Associates,WIPO Case No. D2009-1436 (panel ordered the transfer of finding that “the geographic identifier ‘sedona’ merely exacerbate[s] confusion given that Sedona is commonly known as a United States resort destination where tourists might naturally presume Complainant is located.”); See also Six Continents Hotels, Inc. v. GBT Domains For Sale and Lease,WIPO Case No. D2008-1309 (); Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,WIPO Case No. D2005-0755 (); Six Continents Hotels, Inc. v. credoNIC.com / DOMAIN FOR SALE,WIPO Case No. D2004-0987 ().
Complainant concludes that Respondent has taken the distinctive and dominant element of Complainant’s name (and registered trademark) “La Quinta Inn” and paired it with “Macedonia, OH,” which relates back to Complainant’s hotel – thereby reinforcing “La Quinta Inn” as the dominant and distinctive element of the registered domain name – clearly infringing the name and trademark to which Complainant has rights. The Domain Name is thus confusingly similar, if not identical, to the family of LA QUINTA marks in which Complainant has rights. Rights or Legitimate Interests
Alleging that Respondent has no rights or legitimate interests in the Domain Name, Complainant states that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. As Complainant points out, registration of a domain name, in itself, does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) in the Policy. Volvo Trademark Holding AB v. Nicklas Uvelov,WIPO Case No. D2002-0521. In the present case, Complainant contends, Respondent has made no known use of the Domain Name, aside from registering it. In fact, the Domain Name merely resolves, or “redirects,” to the home page of a website called – who has confirmed no knowledge of Respondent or its web site – which, Complainant insists, does not constitute “active” use. In light of such lack of active or legitimate use, Complainant’s mere assertion that Respondent has no right or legitimate interest is enough to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest exists. Volvo Trademark Holding AB,WIPO Case No. D2002-0521. Respondent must now show by “concrete evidence” that it has rights or legitimate interests in the Domain Name. Kate Spade, L.L. C. v. Darmstadter Designs,WIPO Case No. D2001-l384; See Document Technologies Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270. Complainant contends that such a showing by Respondent is impossible, since the name of the Domain Name refers to Complainant’s hotel property in Macedonia, Ohio and Complainant has extensive trademark registrations and use of the name for close to forty (40) years, as well as the fact that Respondent has not used the Domain Name for any legitimate purpose since its registration in 2009.
In addition, Complainant expresses concern that due to the confusing similarity between the Domain Name and Complainant’s brand, for which a family of marks are registered, Internet users looking for Complainant may be misdirected to Respondent’s website by mistake. As such, Complainant concludes, Respondent is clearly not using the Domain Name in connection with a bona fide offering of goods or services, and the confusion created by Respondent’s name is likely divert customers looking for Complainant’s services online.
Complainant further alleges that Respondent is not commonly known by or affiliated with the Domain Name. Rather the Domain Name clearly refers to Complainant’s La Quinta Inn located in Macedonia, Ohio. Moreover, Respondent is not authorized to provide accommodations at La Quinta hotels, nor is it affiliated with H, the site to which the Domain Name resolves. Finally, Complainant emphasizes, even if Respondent did claim rights in the name, its rights would clearly not supersede those of Complainant, who first registered the LA QUINTA trademark in 1969.
Complainant further alleges that Respondent is not making a legitimate, non commercial fair use of the Domain Name; rather Respondent is tarnishing the trademark and using it misleadingly to divert consumers. This is supported by the fact that the website merely resolves to the H site, with which Respondent has no affiliation. Respondent’s only use of the Domain Name, says Complainant, is the diversion of potential customers from Complainant’s website, based on the confusing similarity between Complainant’s name and the Domain Name. Complainant continues that Respondent’s failure to make actual use of the Domain Name for more than a year – a vast stretch of time given the nature of the Internet and e-commerce – further precludes Respondent from obtaining any rights or legitimate interests in the Domain Name. See ARTISTdirect, Inc. v. OLDG,WIPO Case No. D2000-1367 (); Fairmont Hotel Management, L.P. and Fairmont Hotels & Resorts (U.S.) Inc., v. 613181 BC Ltd,WIPO Case No. D2001-1050; World Wrestling Federation v. Bosman,WIPO Case No. D99-0001.
Finally, Complainant argues that Respondent cannot justify its use of the Domain Name under the theory of nominative fair use because Respondent’s use of the LA QUINTA mark suggests to Internet users that Complainant sponsors or endorses Respondent’s and/or H’s site. As previous panels have noted, there is a difference between using a service mark within the body of a website to identify hotel services and using the mark as a domain name. Since the latter identifies the web site to Internet users as a commercial enterprise, use of a registered mark in a domain name to identify one’s own services would imply ownership, sponsorship or authorization by the mark’s owner. See Six Continent Hotels, Inc., v. Georgetown, Inc.,WIPO Case No. D2003-0214. As a result, Respondent cannot claim fair use of Complainant’s mark.
Registered and Used in Bad Faith
Complainant alleges that the Domain Name was registered and is being used in bad faith, pursuant to widely accepted UDRP case doctrine first established in Telstra v. Nuclear Marshmallows Ltd.,WIPO Case No. D2000-0003. Bad Faith Registration
To establish bad faith registration, Complainant highlights precedent that the registration of a domain name identical to another’s trademark, despite actual knowledge of the other’s rights – or the registration of a domain name wholly incorporating another’s trademark, despite actual or constructive knowledge of the trademark owner’s rights – is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(a)(iii). See Digi Int’l v. DDI Sys., NAF Claim No. FA 124506 (holding that “there is a legal presumption of bad faith, when respondent reasonably should have been aware of complainant’s trademarks, actually or constructively”); LaSalle Bank Corporation v. Domain Active Pty. Ltd., NAF Claim No. FA0404000257756; See also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002). Here, the registration of the Domain Name, which wholly incorporates Complainant’s LA QUINTA INN trademark despite Respondent’s complete lack of affiliation with Complainant, is evidence of opportunistic bad faith. Complainant further argues that because the ultimate effect of any use of the Domain Name will be to cause confusion with Complainant, the use and registration of the Domain Name must be considered to be in bad faith. See Fairmont Hotels & Resorts (U.S.) Inc., WIPO Case No. D2001-1050 (citing Embratel v. McCarthy,WIPO Case No. D2000-0164; Forte (UK) Ltd. v. Ceschel,WIPO Case No. D2000-0283. Moreover, where the mark is obviously connected to the complainant – as the LA QUINTA INN mark is with Complainant – the use of the domain name suggests opportunistic bad faith. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374. Finally, Complainant maintains, where – as here – the registered domain name at issue is almost exactly the same as the registered trademark of a high profile mark which undertakes considerable Internet commerce, it is inferred that the respondent did not register the name by mere chance and, as such, a finding of bad faith is appropriate. See HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT,WIPO Case No. D2006-0439 (citing Axel Springer AG v. Jack Tubul,WIPO Case No. D2005-0554.
Under the above stated law, Complainant insists, Respondent clearly registered the Domain Name in bad faith, intending to capitalize upon Complainant’s goodwill in its LA QUINTA INN trademark, especially in light the eminence of Complainant’s trademarks. See VeriSign Inc. v. Bin g Glu / G Design,WIPO Case No. D2007-0421. At the time the Domain Name was registered, Complainant had already made widespread and substantial use of its LA QUINTA mark since 1969 and its domain name since 1995. Complainant’s “www.” website had been operational long before Respondent registered the Domain Name in 2009. Thus, Complainant states, La Quinta’s high profile presence and fame, coupled with its federal trademark registrations, support an imputation of knowledge of Complainant’s trademark rights on Respondent at the time of registration. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade,WIPO Case No. D2001-1384 (citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028). Complainant concludes based on the foregoing that Respondent registered and used the Domain Name with actual knowledge of Complainant’s trademark rights and thus in bad faith. See Samsonite Corp. v. Colony Holding, NAF Claim No. FA 94313 (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Bad Faith Use
As proof of bad faith use, Complainant points to Respondent’s passive holding of the Domain Name – remaining inactive and not selling or providing any goods or services – merely resolving to the H homepage, a party with which Respondent share no affiliation. See Fairmont Hotel Management, L.P. and Fairmont Hotels & Resorts (U.S.) Inc.,WIPO Case No. D2001-1050 (Chanel, Inc. v. BuyB,WIPO Case No. D2000-1126); O’Neill, Inc. v. Dennis R. O’Neill, NAF Claim No. FA 223020 (citing DCI S.A. v. Link Commercial Corp.,WIPO Case No. D2000-1232)(concluding that respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, NAF Claim No. FA 95314 (finding that respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown,WIPO Case No. D2000-0004 (holding that respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital,WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name and there are no other indications that respondent could have registered and used the domain name for any non-infringing purpose). Furthermore, Complainant cites previous panel decisions reinforcing that “the use, including passive holding, of the disputed domain name may clearly disrupt the business of the Complainant, e.g., through confusion of Internet users wanting to make reservations via the disrupted domain name.” ACCOR v. Park Junghee,WIPO Case No. D2004-0478 (citing ACCOR v. Jose Manuel Fernandez Garcia,WIPO Case No. D2002-0988); see also ARTISTdirect, Inc.,WIPO Case No.D2000-1367; Chernow Communications v. Kimball,WIPO Case No. D2000-0119; Mondich and American Wine Biscuits, Inc. v. Brown,WIPO Case No. D2000-0004.
Furthermore, Complainant asserts, that by failing to make active use of the Domain Name for more than a year, Respondent has made it clear that its only use of the Domain Name is one of bad faith. See ARTISTdirect, Inc. v. OLDG,WIPO Case No. D2000-1367. Moreover, the fact that Respondent has intentionally redirected the website related to the Domain Name to a website which offers competing services to that offered by Complainant further evidences the complete lack of good faith use of the name on the part of Respondent.
Complainant concludes that the facts and legal authority cited in the Complaint support Complainant’s contention that (1) Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark; (2) Respondent has no rights or legitimate interest in respect of the Domain Name; and (3) the Domain Name was registered and is being used in bad faith. As such, the Domain Name should be transferred to Complainant. B. Respondent’s Contentions
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that the Domain Name should be cancelled or transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Complainant has established that it has substantial rights in the LA QUINTA trademarks.
The disputed Domain Name , is comprised of a combination of the LA QUINTA INN mark and the geographical term “Macedonia, OH” – which refers to a specific hotel property owned and operated by Complainant in Macedonia, Ohio. In the view of this Panel the Domain Name is confusingly similar to the LA QUINTA trademark in which Complainant has rights.
In reaching this conclusion this Panel is satisfied that Complainant’s trademark is the dominant element of the Domain Name. This Panel further accepts Complainant’s submission that the combination of its trademark with the term “Macedonia, OH”, reflecting the one of Complainant’s La Quinta hotels, would serve to add to such confusion rather than distinguish the mark and the Domain Name.
Complainant has therefore established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant submits that Respondent has no rights or legitimate interests in the Domain Name at issue. Complainant has argued that Respondent could not have any such rights given Complainant’s rights in the LA QUINTA marks and the extent of its widespread reputation.
Complainant has provided evidence of a substantial reputation in the use of the LA QUINTA marks that stretches across the globe.
Respondent offers no goods or services of its own within the hotel industry. In fact, Respondent offers no goods and services of its own at all and the Domain Name only resolves to another website with which it has no affiliation.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It has been accepted by most panels that in such circumstances under the Policy, the burden of proof shifts to the Respondent to demonstrate that it has such rights.
Respondent’s predatory use of the Domain Name, redirecting to a website offering services that directly compete with Complainant’s business does not constitute a bona fide use of the Domain Name.
Respondent has failed to file any Response or to deliver any communication in this proceeding. In such circumstances, the Panel finds that Complainant has succeeded on the second element of paragraph 4(a) of the Policy also. C. Registered and Used in Bad Faith
Given Complainant’s substantial reputation, it is improbable that Respondent was unaware of Complainant’s marks when it registered the Domain Name. Also, Complainant’s use of the LA QUINTA mark significantly pre-dates Respondent’s registration of the Domain Name.
In the view of this Panel, the fact that the Respondent chose the distinctive combination of the words “La Quinta Inn” and “Macedonia, OH” – a city in which Complainant owns and operates one of its many hotels – indicates that Respondent must have been actually aware of Complainant’s reputation and rights in the use of the LA QUINTA marks when it registered the Domain Name.
On the balance of probabilities, Respondent chose this particular Domain Name because the combination of these elements was more likely to divert Internet users searching for Complainant’s enterprise to another’s website.
Given the circumstances of this case, this Panel is satisfied that Respondent chose and registered this particular Domain Name in order to take predatory advantage of Complainant’s rights and reputation.
Respondent established a website at the Domain Name address that takes visitors to a site that advertises services in competition with Complainant’s business.
This Panel is therefore satisfied that, on the balance of probabilities, Respondent has intentionally attempted to attract Internet users to a website, by creating a likelihood of confusion with Complainant’s LA QUINTA trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
In such circumstances, this Panel is satisfied that, on the balance of probabilities, Respondent registered and is using the Domain Name in bad faith.
Complainant has therefore also established the third element of paragraph 4(a) of the Policy and is entitled to succeed in its application. 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 Complainant.
Ira S. Sacks
Sole Panelist
Dated: October 26, 2010
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