The Complainant is La Quinta Worldwide, L.L.C of Nevada, United States of America represented by Lydecker Diaz of United States of America.
The Respondent is Rudi Seiberlich of Pieve di Teco, Italy. 2. The Domain Name and Registrar
The disputed domain name (“the disputed domain name”) is registered with TierraNet d/b/a DomainDiscover. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2011. On March 1, 2011, the Center transmitted by email to TierraNet d/b/a DomainDiscover. a request for registrar verification in connection with the disputed domain name. On March 2, 2011, TierraNet d/b/a DomainDiscover 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 March 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2011.
The Center appointed The Hon Neil Brown QC as the sole panelist in this matter on April 1, 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 is a large and well-known United States company operating in the hotel industry. It has been involved in that industry since 1969 and operates some 65,000 hotel rooms. It is the registered proprietor of many trademarks for LA QUINTA and variants of that trademark both within the United States and internationally, including in Italy where the Respondent is domiciled. One such trademark is registered number 0875812 for LA QUINTA that was registered with the United States Patent and Trademark Office on August 26, 1969 (“the LA QUINTA trademark”). The Complainant has also registered many domain names incorporating the LA QUINTA trademark which it uses in its business.
The disputed domain name was registered on April 17, 2004. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the disputed domain name is confusingly similar to the Complainant's registered LA QUINTA trademark, that the Respondent has no rights or legitimate interests in the disputed domain name and that it has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the disputed domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered LA QUINTA trademark to which reference has already been made. It then says that the disputed domain name is confusingly similar to the LA QUINTA trademark as the spelling of that word in the domain name is the same as the spelling of the same word in the trademark with the addition of two hyphens and the word “hotels”, which is an essential part of the Complainant's business and known to be so, thus suggesting that the disputed domain name relates to the Complainant's hotels.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the disputed domain name because the facts show an obvious intention by the Respondent to benefit from the reputation of the well-known LA QUINTA trademark and to use it in illegitimate way, namely by giving the false impression that it is affiliated with the Complainant. Moreover, the Complainant contends that it has never authorized the Respondent to use its trademark in a domain name or anywhere else.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It contends that this so because the Respondent registered the disputed domain name incorporating the LA QUINTA trademark without any permission from the Complainant and has passively held it since then. The Complainant contends that these activities of the Respondent constitute bad faith registration and use within the meaning of paragraph 4(b) of the Policy and within the general meaning of bad faith.
Finally, the Complainant contends that the Respondent has a history of cybersquatting and has registered other domain names similar to registered trademarks in which Respondent has no rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that a respondent has not made a formal submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the complainant to make out its case and past WIPO UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
The Panel accepts the evidence submitted by the Complainant that it owns the registered LA QUINTA trademark and the other variants of that trademark to which reference has been made, that they are all current and that it therefore has rights in those marks. In particular, the Panel notes that one of the LA QUINTA trademarks is registered in Italy which was specified as the country of the Respondent's domicile when the disputed domain name was registered.
The Panel also finds that the disputed domain name is confusingly similar to the LA QUINTA trademark. The spelling of the substantial part of the domain name is the same as that of the mark; all that has been done to create the domain name is to add to the LA QUINTA mark two hyphens and the word “hotels” suggesting to the objective bystander that the disputed domain name relates to the Complainant and its hotels. Numerous UDRP decisions have held that adding generic words to a trademark is insufficient to give any distinctiveness to the domain name in dispute; see Alstom v. FM Laughna,WIPO Case No. D2007-1736 and Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565. Accordingly, the objective bystander, faced with the disputed domain name and the LA QUINTA trademark, would assume that the domain name was referring to the well-known international hotel operator La Quinta, its hotels and the activities related to their operation such as reservations.
It has also long been held that minor features such as hyphens and suffixes such as the gTLD suffix “.com” cannot negate confusing similarity where it otherwise exists, as it does in the present case.
For these reasons, the Panel finds that the domain name is confusingly similar to the trademarks and that the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if the respondent proves any of these elements or indeed anything else that shows it has a right or interest in the disputed domain name, the complainant will have failed to discharge its onus and the complaint will fail. The Panel's task in deciding if a respondent has any rights or legitimate interests in a domain name is made more difficult when the respondent is in default and does not file a response or any other form of submission. The Respondent in the present case was given notice that he had until March 28, 2011 to send in his Response, that he would be in default if he did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in the WIPO Overview 2.0 of WIPO Panel Views on Selected UDRP Questions:
“…a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a) (ii) of the UDRP [see also paragraph 4.6 below in relation to respondent default]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The prima facie case is based on the facts that:
(i) the LA QUINTA trademark is well known internationally and has been so for many years;
(ii) it indicates the name of the well-known international hotel operator that also operates in Italy where the Respondent is apparently domiciled;
(iii) the Respondent chose this prominent name for his domain name and added only two hyphens and the word “hotels” which describes an essential feature of the Complainant’s business, thus raising the inference in the minds of the Internet public that the domain name would lead to the online facility of the Complainant including its reservations and other services;
(iv) the Respondent was not authorized by the Complainant to use the LA QUINTA name or mark in a domain name or anywhere else; and
(v) the foregoing facts raise the inference that the Respondent has registered and will use the disputed domain name for an illegitimate purpose.
The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Panel finds that the Complainant has therefore made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.
The Complainant relies on all of the provisions of paragraph 4(b) of the Policy and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the Respondent both registered and is using the domain name in bad faith. That is so for the following reasons.
First, the evidence shows that the Respondent has registered as a domain name the Complainant's well known LA QUINTA trademark. To this trademark the Respondent has added only two hyphens and the word “hotels”, which is an essential feature of the Complainant’s business as a hotel operator, thus suggesting that the disputed domain name relates to the Complainant's hotels and services associated with them such as a reservations service. This raises the assumption that the domain name was registered for the illegitimate purpose of trading off the name and reputation of the Complainant for commercial purposes and thus in bad faith, for the Respondent clearly had the Complainant in mind when he registered the domain name without permission. As the Complainant has shown by reference to decisions such as VeriSign Inc. v.Bin g Glu/ G Designs, WIPO Case No. D2007-0421 the very use of such a well-known trademark as LA QUINTA without any permission is indicative of bad faith. In the absence of any explanation from the Respondent for doing so and his record as a cybersquatter, the Panel finds that the Respondent registered the disputed domain name in bad faith.
Secondly, the evidence adduced by the Complainant raises the inference that the Respondent registered the domain name with the intention either of trying to sell it or using it in the manner described in paragraph 4(b)(ii), (iii) and/or (iv) of the Policy. It is true that the disputed domain name does not resolve to an active website, but the only inference open on the facts, including the fact that the Respondent has a history as a cybersquatter, is that his intentions were wholly illegitimate and designed to harm the interests of the Complainant.
Moreover, in the opinion of the Panel, this is an appropriate case to apply the principle in Telstra Corporation Limited v. Nuclear Marshmallows, supra to the effect that, as it was put in the decision cited by the Complainant, DCI S.A. v. Link Commercial Corporation,WIPO Case No. D2000-1232:
“In view of all of the above, the Administrative Panel follows the rulings set out in the decision case No. D2000-0003-Telstra Corporation Limited vs. Nuclear Marshmallows in finding that the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. The Administrative Panel concludes that the Respondent holds the domain name in bad faith.”
Accordingly, for those reasons the Panel concludes that the case presented by the Complainant and the UDRP decisions it has cited show that the Respondent registered and used the domain name in bad faith within the meaning of paragraph 4 (b)of the Policy and within the general concept of bad faith.
The Complainant has accordingly made out the third of the three elements that it must establish. 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 disputed domain name be transferred to the Complainant.
The Hon Neil Brown QC
Sole Panelist
Dated: April 7, 2011
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