The Complainant is La Quinta Worldwide L.L.C. of Nevada, United States of America represented by Lydecker Diaz, United States of America.
The Respondent is PrivacyP Moergestel, of Netherlands / Purple Bucquet of Panama,Republic of Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2010. On December 3, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2010, the Registrar 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 December 9, 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 a first amendment to the Complaint on December 9, 2010 and a second amendment on December 14, 2010.
In the present case the WhoIs search results revealed that the holder of the disputed domain name was PrivacyP, shielding the identity of the underlying registrant whose name, Purple Bucquet, was disclosed by the Registrar to the Center. It has been held in a number of cases, where the name of a privacy services firm has been used as a shield of the registrant’s identity, that both the holder’s name involving the privacy service provider and the name of the registrant communicated to the Center by the Registrar be properly identified as respondents. In this case, both the name of the privacy service provider, PrivacyP, and the name Purple Bucquet identified by the Registrar as the registrant, are referred to collectively as the Respondent, in the singular, in the balance of this decision. See Kira Reed Lorsch v. K c/o Host Master, A Domain Privacy and the Transure Enterprise Ltd.,WIPO Case No. D2010-0850 and decisions cited therein.
The Center verified that the Complaint together with the amendments to 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 December 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.
The Center appointed Joan Clark as the sole panelist in this matter on January 17, 2011. 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 asserts ownership of numerous trademarks LA QUINTA, either alone or as part of combination marks in which LA QUINTA is the principal part. The earliest registration for LA QUINTA relied upon by the Complainant was on August 26, 1969 in the United States, and the Complainant asserts that it has owned and operated hotels under its trademark LA QUINTA since 1968.
The disputed domain name was registered on August 22, 2000 and is scheduled to expire August 22, 2011. 5. Parties’ Contentions A. Complainant
The Complainant states that since 1968, for over forty-one years, it has owned and operated its hotels under its trademarked LA QUINTA name, that it has over 65,000 La Quinta hotel rooms, over 9,000 La Quinta employees and operates and provides franchise services to more than 500 hotels in 40 states in the United States and Canada. The Complainant asserts that the Complaint is based on its United States of America and international trademark registrations and applications for the trademark LA QUINTA registered alone and as the prominent part of numerous other marks. The earliest of these registrations was on August 26, 1969.
The Complainant also asserts it has registered numerous domain names in connection with its services, which domain names include LA QUINTA alone or as part of combination domain names. The Complainant asserts that the La Quinta name permeates both the United States and international hospitality markets and is synonymous with the Complainant’s hotels, motels and inns, and is a famous trademark worldwide, with significant and valuable goodwill.
The Complainant states that in August 2000, almost five years after the Complainant registered in 1995, and almost thirty-one years after the Complainant registered its first LA QUINTA trademark in 1969, the Respondent registered the disputed domain name . The Complainant declares that on August 12, 2010 and again on August 19, 2010 it contacted the Respondent to request a transfer to it of the disputed domain name, but has received no response from the Respondent.
The Complainant avers that the website which correlates with the disputed domain name features “related searches” to topics such as “La Quinta” and “La Quinta Inn”, which when clicked upon lead to sponsored listings directly to the Complainant’s official website as well as to competitors of the Complainant and third-party hotel reservation websites.
The Complainant asserts that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights. It argues that Internet users finding on search engines or elsewhere are likely to be misled into thinking the Complainant is the registrant or is otherwise associated with the disputed domain name. This according to the Complainant is further exacerbated by the Respondent’s linking to the Complainant’s official website as a “sponsored link” without license or permission to do so. In addition, the Complainant argues that where the domain name in dispute consists of a close misspelling of the Complainant’s trademark, the domain name is found to be confusingly similar to the Complainant’s mark. The Complainant notes that the term “laqunita” has no meaning or interpretive translation in any language, that it differs from the Complainant’s trademark LA QUINTA only by the inversion of the letters “i-n” to “n-i" which the Complainant says is a common typing or spelling error, and may be referred to as typo squatting.
The Complainant avers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that it has made no legitimate use of the domain name since its registration and that the Respondent has no obvious connection with the domain name in dispute. The Complainant states that the Respondent has not used the website associated with the domain name in dispute for any legitimate business or enterprise, that it is not using the disputed domain name in connection with the bona fide offering of goods or services but instead is using the disputed domain name as a parking space for the Respondent where sponsored listings direct the user to the Complainant’s official website and also to the Complainant’s competitors as well as other third-party sites. The Complainant continues that the Respondent is not commonly known by or affiliated with the domain name in dispute, that it is not making a legitimate noncommercial fair use of the domain name and intends to receive commercial gain from the Complainant’s name and goodwill.
The Complainant asserts that the domain name in dispute was registered and is being used in bad faith. The Complainant bases this on the facts that the Respondent was typo-squatting, as above described, that the Complainant’s mark was widely known, that the website for the disputed domain name links directly to the Complainant itself, establishing that the Respondent was fully aware of the Complainant and its business, and sought to divert Internet users. The Complainant states it is likely that the Respondent is obtaining “click-through” fees for diverting Internet users to competing websites while parking the disputed domain name on a web page filled with commercial advertising links, and is aiming to profit from the Complainant’s renowned trade mark. The Complainant asserts that there is no reason for the Respondent’s selection of the disputed domain name other than as a deliberate attempt to profit from the confusion generated with the Complainant’s LA QUINTA mark.
The Complainant states that Purple Bucquet has a history of cyber-squatting and refers to nineteen complaints which have been filed against Purple Bucquet in regard to the registration of nineteen different domain names, all of which have been transferred to the complainants respectively making those complaints. The Complainant relies on this pattern of cyber-squatting as further evidence of the Respondent’s registration and use of the disputed domain name in bad faith.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to the disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to the trademark LA QUINTA in which the Complainant asserts rights. The Panel agrees with the Complainant’s contention that the disputed domain name consists of a “close misspelling” of the trademark LA QUINTA. In fact, the Panel has had to examine carefully the disputed domain name and the Complainant’s trademark to determine which was which. Numerous decisions have held that where a domain name consists of a close misspelling of the complainant’s trademark the domain name is confusingly similar to the complainant’s mark. See Encyclopedia Britannica Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330; Oxygen Media, LLC v. Primary Source,WIPO Case No. D2000-0362.
A question to be resolved is whether the Complainant owns rights in the trademark LA QUINTA, the earliest registration for which was dated August 26, 1969 under number 087,802 in the United States of America Patent and Trademark Office1. The 1969 registration, according to copies of certificates of registration produced by the Complainant, was in the name Barshop Motel Enterprises, Inc. A later copy of a certificate of registration for the same mark, apparently issued on August 20, 2007, states that the last listed owner of this mark was La Quinta Motor Inns, Inc. However, other trademark registrations such as that for the service mark “EVERY LA QUINTA, EVERY TIME” registered on June 22, 2004 and “LA QUINTA RETURNS” registered on April 13, 2004, which are registered in the name of La Quinta Worldwide, L.L.C., the Complainant herein, both state that this owner is also the owner of United States of America registration number 875,802, originally registered on August 26, 1969. From this the Panel concludes that the Complainant La Quinta Worldwide L.L.C. is the owner of the mark LA QUINTA first registered on August 26, 1969. Similarly, the registration for LA QUINTA RETURNS in the name of La Quinta Worldwide L.L.C., states that this registrant is the owner of United States of America registration number 1,089,641 which was a registration dated December 22, 1977 for LA QUINTA in the name of La Quinta Motor Inns, Inc. The Panel therefore concludes that the Complainant is the owner and successor in title to the original owners of registrations for the trademark LA QUINTA, dating back to 1969 and 1977. This is important since these early registrations for the Complainant’s mark were prior to the registration of the disputed domain name on August 22, 2000.
The addition of the suffix “.com” and the elimination of a space between “la” and “quinta” do not detract from the finding that the domain name in dispute is confusingly similar to the Complainant’s trademark LA QUINTA.
The Panel concludes that the domain name in dispute is confusingly similar to the trademark LA QUINTA in which the Complainant has rights, and the first element required for the Complaint to succeed has been established. B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name in dispute. The Complainant has produced a print-out of the Respondent’s website showing that it is merely a parking space, where sponsored listings direct the user to the Complainant’s official website as well as the Complainant’s competitors and other third-party sites. Cases have held that the use of a domain name that merely offers links to other websites, called parking, is not a bona fide offering of goods or services. See VeriSign Inc. v. BIN g Glu / G Design,WIPO Case No. D2007-0421; Sports Holdings, Inc. v. MB,WIPO Case No. D2006-1262; Rich Products Corporation v. Cynthia Kirk,WIPO Case No. D2007-0871. The Complainant avers that the Respondent is not commonly known by or affiliated with the disputed domain name, and that it is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, the Complainant presuming that the Respondent’s activity was for compensation.
While a complainant has the burden of establishing all three elements necessary for a successful challenge to a domain name registration, once a complainant has made a prima facie case that the respondent has no rights or legitimate interests in the domain name the burden of evidence shifts to the respondent. See Kira Reed Lorsch v. K c/o Host Master, A Domain Privacy and the Transure Enterprise Ltd.,WIPO Case No. D2010-0850 and decisions there cited. The Respondent has not replied to the Complainant’s contentions and there has been no refutation of the charges made by the Complainant. Accordingly the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element for the Complaint to succeed has been established. C. Registered and Used in Bad Faith
The Complainant has asserted that the trademark LA QUINTA has been used since 1968, and the earliest registrations evidenced by the certificates produced by the Complainant date back to 1969 and 1977. While the Complainant did not declare or explain that these registrations had been assigned from the original registrants to the Complainant, the Panel is justified in concluding from the various certificates of registration for other marks, as set forth under the second unnumbered paragraph of 6 A. above, that the Complainant is the successor in title of the original registrations. It is therefore established, there being no evidence to the contrary from the Respondent, that the trademark LA QUINTA was in use and was registered before the disputed domain name was registered on August 22, 2000.
The Panel finds that the disputed domain name was registered in bad faith, in view of the fact that the trademark with which it is confusing, LA QUINTA, was in wide-spread use, according to the unrefuted evidence of the Complainant, and registered, before the creation of the disputed domain name. Furthermore the small difference in spelling, obviously intentional in the Panel’s view, resulting in confusion between the disputed domain name and the Complainant’s trademark, and the reference on the web page associated with the Respondent’s domain name to sponsored links including the trademarks (correctly spelled) of the Complainant as well as competitors of the Complainant and others, indicate clearly that the Respondent must have been aware of the Complainant’s trademark and was deliberately using the misspelled domain name to create confusion and draw Internet users to the Respondent’s website. In all probability, as suggested by the Complainant, this was for a commercial gain to the Respondent based upon the extent of use of its website.
The Panel has no hesitation in finding that the domain name in dispute was registered in bad faith.
For the same reasons that caused the Panel to conclude that the domain name in dispute was registered in bad faith, the Panel concludes that its continuing use is in bad faith.
The numerous prior cases in which Purple Bucquet has registered domain names which were disputed and were ordered to be transferred to the complainants with whose trademarks they were found to be confusing, support the conclusion that the Respondent is a serial cyber-squatter and provides further support, if any had been needed, for a finding of bad faith registration and use of the domain name in dispute in this case.
Accordingly the third element required for the Complaint to succeed has been established. 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.
Joan Clark
Sole Panelist
Dated: January 31, 2011
1 In that early registration, the trade mark was shown with the initial letters ¨l¨ and ¨q¨ in upper case, and the remaining letters in lower case. This difference is irrelevant to the issue of confusing similarity.
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