The Complainant is La Quinta Worldwide, L.L.C. of Las Vegas, Nevada, United States of America, represented by Lydecker Diaz, United States of America (the “United States”).
The Respondent is Enrique Coppel of Culican, Sinaloa, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2011. On February 11, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 11, 2011, eNom 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 February 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2011.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on April 7, 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
Complainant is La Quinta Worldwide L.L.C., a company established since 1968 in the hotel business, since then operating under the trademark and name LA QUINTA. This mark currently identifies over 65,000 rooms in more than 500 hotels throughout the United States, Canada and Mexico.
Trademark LA QUINTA is registered in the United States as well as in over fifty other countries, as state the copies attached as Annexes 4-5 of the Complaint. The oldest registration dates back to 1969, that is, more than 40 years ago.
La Quinta Worldwide L.L.C. holds also several domain name registrations, all of them formed by their mark LA QUINTA. It is important to note that among these domain names there are some formed by the mark LA QUINTA and the name of a city, such as , , , etc.
The evidence presented shows that trademark LA QUINTA is original and distinctive. Besides, it has gathered awareness throughout the world and can be considered a well-known trademark, according to the provisions of article 6 bis of the Paris Convention.
In sum, the Complainant shows evidence of substantial goodwill and name recognition in the expression “La Quinta”, based on intensive use on a long term basis. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name contains their worldwide known trademark LA QUINTA.
The Complainant has obtained registrations for LA QUINTA and other related marks in over 50 countries throughout the world, as well as several domain names formed by this mark, as stated above. Also Complainant claims having formed a “family of marks” having as common characteristic the mark LA QUINTA. The disputed domain name incorporates entirely the mark LA QUINTA, in addition to the name “Miami”.
The Complainant claims never having licensed or authorized the Respondent to use its mark or to apply it to any kind of domain name. The Complainant also states that the Respondent is not making a legitimate use of the disputed domain name. On the contrary, they allege that the disputed domain name is being used to offer information on hotels and touristic information in the Miami area, as states Annex 10 of the Complaint.
The Complainant has attempted to contact a prior registrant twice, but no response was received. Instead, the domain name was transferred to another Registrant. This new one has also been contacted by the Complainant, without any response being received. Annexes 7 to 9 of the Complaint show these facts. B. Respondent
Although timely notified of the Complaint, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
ii. The respondent has no rights or legitimate interests in respect to the domain name; and
iii. The respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark LA QUINTA, which is registered in several countries where the Complainant does business and consequently used regularly in those countries. In addition, the Complainant proved it has been using this mark since 1968 in the United States, Canada and Mexico.
Further, the Panel finds that the disputed domain name, is indeed confusingly similar to the trademark belonging to the Complainant, since this mark is entirely reproduced in the domain name registered by the Respondent. Besides, the disputed domain name incorporates entirely the mark LA QUINTA, in addition to the name “Miami”.
This fact alone can be considered as an attempt to lead the consumers to confusion, as it may appear to create an association with the Complainant.
Hence, the Panel concludes that the first of the elements in the Policy has been satisfied by the Complainant in this proceeding. B. Rights or Legitimate Interests
The Panel understands that the mark LA QUINTA is a distinctive term, necessarily associated with the Complainant, since it is not only registered as a mark in its name, but also is the main part of the Complainant’s trade name.
Further, the Complainant provided sufficient evidence of the goodwill of this mark in the tourist industry throughout the world. Hence, the Panel considers that the Respondent, in all likelihood, could not be unaware of the mark LA QUINTA and its direct relation to the Complainant. The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights and legitimate interests in the disputed domain name. This has not been rebutted by the Respondent.
It has also been shown that the Respondent is not making any direct use of the disputed domain name, but merely using it as a parking space for sponsored listings – listings that are related to the core business of the Complainant.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. For this reason the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
It is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the goodwill of the Complainant’s mark and particularly of the Complainant’s goodwill in the hotel field.
Once contacted by the Complainant, the prior Registrant did not answer. Instead, the disputed domain name was transferred to another Registrant which, when contacted, remained silent.
Further, the Complainant is using the disputed domain name as a parking space for sponsored links in the hotel field, in a clear act of bad faith. The Respondent appears to be doing so for the purpose of commercial gain arising from the probable confusion of the disputed domain name with the Complainant and its mark. In fact even aware after the notification of this Complaint, the Respondent did not stop the use.
The registration and use of this disputed domain name appears to have the sole intention to cause confusion with the Complainant and its business. In fact, linking the Complainant’s trademark with the name of the city of Miami shows that the Respondent was not only aware of the Complainant’s business and mark, but also of the domain names registered and used by the Complainant. The disputed domain name has the same appearance as some of the ones owned by the Complainant, hence leading to the false conclusion that they all belong together.
The Panel finds that for the reasons above that the Respondent obtained the registration and has been using the disputed domain name in question in bad faith.
The Panel, hence, finds present the third element. 7. Decision
As outlined above, the Panel concludes that the disputed domain name reproduces the Complainant’s registered mark LA QUINTA. The Panel concludes, besides, that the Respondent has no rights or legitimate interests in the domain name and that the Respondent registered and used the disputed domain name in bad faith.
Therefore, pursuant to paragraph 4(i) of the Policy, the Panel orders that the domain name be transferred to the Complainant.
Alvaro Loureiro Oliveira
Sole Panelist
Dated: April 26, 2011
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