The Complainant is La Quinta Worldwide L.L.C of the United States of America, represented by Lydecker Diaz, L.L.C., United States of America (“U.S.” or “United States”).
The Respondent is PrivacyP of Australia / Domain Tech Enterprises, of Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2011. On June 7, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name. On June 7, 2011, Power Brand Center Corp. 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 June 14, 2011 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 June 16, 2011.
The Center verified that the Complaint together with the amendment 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 June 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 12, 2011.
The Center appointed Ian Blackshaw as the sole panelist in this matter on July 26, 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
Since 1968, for over forty-one (41) years, the Complainant has owned and operated its hotels under its trademarked LA QUINTA name.
The Complainant 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, Mexico, and Canada.
This Complaint is based on Complainant’s U.S. and international trademark registrations and applications.
The Complainant’s U.S. registrations and applications are as follows:
“La Quinta,” Registration 0875802, registered on August 26, 1969; “La Quinta,” Registration 1080641, registered on December 27, 1977; “La Quinta Inn,” Registration 1823440, registered on February 22, 1994; “La Quinta Inn,” Registration 1841032, registered on June 21, 1994; “LQ La Quinta Inn & Suites,” Registration 2298693, registered on December 7, 1999; “LQ La Quinta Inn & Suites,” Registration 2300509, registered on December 14, 1999; “La Quinta Elink,” Registration 2575959, registered on June 4, 2002, in Class 16 for hotel and motel newsletters; “La Quinta Returns,” Registration 2832831, registered on April 13, 2004; “Every La Quinta, Every Time,” Registration 2855754, registered on June 22, 2004; LQ La Quinta Inn & Suites, Registration no. 3064031, registered February 28, 2006; “La Quinta Inn,” serial no. 76646437; “La Quinta,” serial no. 76644842; “La Quinta,” serial no. 76644841; “La Quinta Inn & Suites,” serial no. 76646890; “La Quinta Inn,” serial no. 77027904 in Class 43 for hotel and motel services and Class 35 for provision of facilities for meetings, conventions, and exhibitions; “La Quinta Inn,” serial no. 77122449 in Class 43 for hotel and motel services and Class 35 for provision of facilities for meetings, conventions, and exhibitions; “La Quinta Inn & Suites,” serial no. 77122413 in Class 43 for hotel and motel services and Class 35 for provision of facilities for meetings, conventions, and exhibitions; “La Quinta Inn & Suites,” serial no. 77027921 in Class 43 for hotel and motel services and Class 35 for provision of facilities for meetings, conventions, and exhibitions; “La Quinta University,” serial no. 76598964 in Class 41 for educational services.
The Complainant also has foreign trademark registrations and applications in over fifty (50) countries throughout the world, including in Australia (Australia trademark registration no. 860443 for LA QUINTA) where the Respondent appears to reside. Additionally, the Complainant owns trademark registrations in Japan, the Republic of Korea, Croatia, Czech Republic, Denmark, Finland, France, Germany, the United Kingdom of Great Britain and Northern Ireland, Hungary, India, Indonesia, Ireland, Italy, Netherlands Antilles, Nicaragua, Norway, Panama, Poland, Portugal, Romania, Singapore, Slovak Republic, Slovenia, Sweden, Switzerland, Turkey, Ukraine and Venezuela.
Evidence of all these trademark registrations have been provided to the Panel.
In addition, the Complainant has registered numerous domain names in connection with its services; the Complainant owns the following domain names:
,, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,, , , , , ,, , , , , , , , and .
Again, evidence of these domain name registrations has been provided to the Panel.
In short, in connection with its extensive hotel network, the Complainant has registered and applied for numerous trademarks, both in the United States and in over fifty (50) countries abroad, as well as registering domain names, to protect and promote its brand globally. The Complainant invests significant resources in advertising and promoting its La Quinta trademarks and the domain name annually. As a result, the La Quinta name permeates both the United States and international hospitality market and is synonymous with the Complainant’s hotels, motels, and inns. Put simply, the Complainant’s name is associated globally with its product and is a famous trademark worldwide. Through the efforts enlisted above, the Complainant has fostered and maintained significant and valuable goodwill as well as an outstanding reputation in its marks and domain name around the world. As such, the Complainant has obtained international trademark protection for its LA QUINTA trademarks.
The Complainant registered its first federal LA QUINTA trademark registration in 1969.
The Respondent registered the disputed domain name on August 19, 2004.
On March 31, 2011 and again on April 28, 2011, legal counsel for the Complainant contacted the Respondent to request a transfer of the disputed domain name. The Respondent has neither responded to nor complied with Complainant’s request to transfer the disputed domain name. Evidence of this has been provided to the Panel. 5. Parties’ Contentions A. Complainant
The Complainant makes the following assertions: i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
As established above, the Complainant has registered and applied for numerous trademarks in the United States, Mexico and over fifty (50) countries abroad, in addition to registering domain names and maintaining websites in connection with its hotels, motels, inns, restaurants, and franchise services. The Complainant also invests a significant amount of resources advertising and promoting its La Quinta trademarks and the domain name in order to protect and promote its brand globally. Evidence has been provided to the Panel.
Clearly, due to its longstanding use and establishment of the trademark LA QUINTA worldwide, the Complainant has developed a family of international trademark rights in and to the name “La Quinta” for hotel and motel services. “A family of marks is a group of marks having a recognizable common characteristic….” Han Beauty, Inc. v. Alberto-Culver Co. 236 F.3d 1333 (C.A. Fed. 2001) citing J& J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1462, 18 USPQ2d 1889, 1891 (Fed.Cir.1991). “A family of marks arises if the purchasing public recognizes that the common characteristic is indicative of a common origin of the goods. ” Id. The common characteristic “La Quinta” is clearly recognizable in all the Complainant’s marks, and the global purchasing public clearly recognizes “La Quinta” as indicative of the Complainant’s hotels.
Here, the disputed domain name wholly incorporates (emphasis added) the Complainant’s trademark LA QUINTA in its entirety. “[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy…” Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. “The phrase ‘confusingly similar’ means that concurrent use of conflicting marks will create a likelihood of confusion, and hence infringement.” 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, 137U.S.P.Q. 551, 554 (C.C.P.A. 1963). “In making a comparison of the degree of identity between the conflicting marks of the parties the modern Restatement of Torts recommends that the degree of resemblance between the conflicting designations be analyzed by a comparison of: the overall impression created by the designations; pronunciation; translation of foreign words; and verbal translation of pictures; suggestions, connotations or meanings of the designations.” Id. citing Restatement (Third) of Unfair Competition § 21(a) (1995).
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.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 25:78 (4th ed.). In the present case, the trademarked LA QUINTA and create the same overall impression; the spelling of the key terms “La Quinta” are identical; the pronunciation of the key terms is identical; and the sounds are identical. The only difference is the addition of the geographical term “Daytona Beach” which refers to the city Daytona Beach, Florida wherein hotel properties are owned and operated by the Complainant.
Moreover, it is clear that in the present case, the term “La Quinta” is the dominant element of the domain name . In Sainsbury’s Bank Pic Company v. Owen Webster,WIPO Case No. D2007-1246 , the Panel agreed with the Complainant’s contention that the “Sainsbury’s” element of their trademark, incorporated in the disputed domain name, was the distinctive and dominant element of the Complainant’s trademark. As such, the disputed domain name , which contained the distinctive and dominant element along with the addition of a generic element (finance), was confusingly similar to the Complainant’s name.
Moreover, in the case of F. Hoffmann-La Roche AG v. Andrew ZZZ,WIPO Case No. D2006-0357, the panel held that the addition of generic words to the trademark TAMIFLU to the domain names , and , in which the Complainant had rights, had no real significance and the predominant part remained of the Complainant’s trademark, TAMIFLU. The Respondent has wholly incorporated the Complainant’s LA QUINTA trademark in its domain name and simply inserted the name of the city “Daytona Beach” which does not takeaway from the dominant element of the domain name “La Quinta.”
Moreover, the term refers to the La Quinta hotel properties owned and operated by the Complainant in the City of Daytona Beach, Florida. See Annex 9. Thus, the descriptive wording “Daytona Beach” is indicative of Complainant La Quinta’s specific hotel properties in Daytona Beach, Florida, and, as a result, is likely to confuse consumers by indicating that there is a connection or affiliation between the Respondent’s website and the Complainant.
In fact, the addition of the geographical term “Daytona Beach” increases the similarity of the Complainant’s mark with the disputed domain name since the addition of the city Daytona Beach suggests that Complainant’s services are provided in that particular location. Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658 . Furthermore, prior panels have found 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. In La Quinta Worldwide, LLC v. Texas International Property Associates,WIPO Case No. D2009-1436, the 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.” Likewise, in La Quinta Worldwide, LLC v. Enrique Coppel,WIPO Case No. D2011-0279, the Panel ordered the transfer of finding: “in fact, linking the Complainant’s [La Quinta] 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.” Id. See also Six Continents Hotels, Inc. v. GBT Domains For Sale and Lease, WIPO Case No. D2008-1309 (in ordering transfer of domain name ); Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,WIPO Case No. D2005-0755 (in ordering transfer of domain name ); Six Continents Hotels, Inc. v. credoNIC.com / DOMAIN FORSALE,WIPO Case No. D2004-0987 (in ordering transfer of domain name).
Since the Complainant La Quinta owns hotels in Daytona Beach, Florida (see Annex 9), the domain name is likely to confuse Internet users as to an affiliation with the Complainant’s hotels located in this city. Essentially, the Respondent has taken the distinctive and dominant element of Complainant’s name (and registered trademark) “La Quinta” and paired it with the city name “Daytona Beach”, clearly infringing on the Complainant’s rights to its name and trademark rights. Moreover, as established above, the Complainant has rights to the family of LA QUINTA marks. The disputed domain name registered by the Respondent is indisputably similar, if not identical, to the family of LA QUINTA marks in which the Complainant has rights. Conclusively, is identical or confusingly similar to a trademark or service mark in which Complainant has rights. ii. The Respondent has no rights or legitimate interests in respect of the domain name;
(Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))
The Respondent has made no legitimate use of the domain name since its registration approximately seven (7)(emphasis added) years ago, and could not possibly use the domain name legitimately in the future. Specifically, the Respondent has no obvious connection with the disputed domain name, nor could the Respondent have such connection given the Complainant’s extensive rights in LA QUINTA in connection with hotel services, in both the United States (where Daytona Beach, Florida is located) and in Australia (where the Respondent appears to be located).
The Respondent is not using the domain names in connection with a bona fide offering of goods or services.
There is no evidence of the Respondent’s use, or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Instead, is merely a parking space for the Respondent, where “Sponsored Listings” direct the user to Complainant’s official website and competitors to the Complainant as well as other third party sites. See Annex 8. Case law holds that merely “parking” a domain name does not establish any right or legitimate interest in the domain name by Respondent. See VeriSign Inc. v. Bin g Glu / G Design,WIPO Case No. D2007-0421; Sports Holdings, Inc. v. MB, WIPO Case No. D2006-1262. The use of a domain name that merely offers links to other websites, called parking, is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. Rich Products Corporation v. Cynthia Kirk,WIPO Case No. D2007-0871; Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan,WIPO Case No. D2004-0214.
Moreover, since registering the disputed domain name in August 2004, approximately seven (7) years ago, the Respondent has made no legitimate use of the disputed domain name. See Media corp Radio Singapore Pte Ltd v. HL Lim aka Hwee Lee Lim, WIPO Case No. D2004-0291 (the Panel finding the Respondent’s failure to use domain name for 44 months as evidence of lack of legitimate use).
The Respondent is not commonly known by or affiliated with the domain names.
The Respondent offers no services and makes no reference to a legitimate business enterprise, which presumably does not exist, on the websites affiliated with the disputed domain name. Instead, the Respondent is using to create a false sense of association, affiliation, or sponsorship with the Complainant, and the Complainant has never authorized the Respondent’s use of its La QUINTA trademarks. Explicitly, the Respondent is making illegitimate use of the disputed domain name, using it not for any affiliation with a business conducted by the Respondent, but instead to portray the false impression of an affiliation with the Complainant.
The Respondent is not making a legitimate, non-commercial fair use of the domain names and intends to receive commercial gain from Complainant’s name and goodwill.
The Respondent’s domain name falsely suggests an affiliation with the Complainant, and the connected website contains direct “sponsored listings” to the Complainant’s official website, to the Complainant’s competitors and to hotel reservation websites where additional competitors of the Complainant can be found. Evidence has been provided to the Panel. Thus, Internet users who are searching for the Complainant’s hotel rooms in Daytona Beach, Florida can be easily diverted to the Respondent’s site and directed to sites of the Complainant’s competitors offering hotel services. “Domain names that are identical or confusingly similar to a complainant’s mark, which are used to market goods or services that compete with those offered under the complainant’s mark, are not being used in connection with a bona fide offering of goods or services pursuant to Policy¶4(c)(i).” Hancock Fabrics, Inc. v. Forum LLC, NAF Claim No. FA0503000447259; Grand Lodge Fraternal Order of Police v. Forum LLC, NAF Claim No. FA0506000493393. As such, the Respondent has pilfered the Complainant’s good name and reputation to fraudulently illicit customers to visit a website used as a place to park advertisements, likely for a fee.
The Respondent is profiting off the name and good will of the Complainant, due to the clearly intentional confusion it has created between itself and the Complainant.
There is no evidence of the Respondent’s use, or preparations to use the disputed domain name or a corresponding domain name in connection with a bona fide offering of goods or services. Case law holds that merely “parking” a domain name does not establish any right or legitimate interest in the domain name by the Respondent. See VeriSign Inc. v. Bin g Glu / GDesign,WIPO Case No. D2007-0421; Sports Holdings, Inc. v. MB, WIPO Case No. D2006-1262. The use of a domain name that merely offers links to other websites, called parking, is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. Rich Products Corporation v. Cynthia Kirk,WIPO Case No. D2007-0871; Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan,WIPO Case No. D2004-0214.
Here, the Respondent is using the domain as “a web portal through which Internet users cannot only obtain information about competitive hotel offerings but also compare pricing of those hotels with others and make reservations at any of those hotels,” which has been held to constitute opportunistic use, and cannot constitute bona fide commercial or fair use sufficient to legitimize any rights and interests the Respondent might have in the disputed domain name. WHM L.L.C. v. North point, Inc.,WIPO Case No. D2005-1134 citing True BlueProductions v. Chris Hoffman, WIPO Case No. D2004-0930; R, Inc. v. WolfgangReile a/k/a RWG Internet et al FA208576 (Nat. Arb. Forum January 27, 2004). Lockheed Martin Corporation v. Deborah Teramani,WIPO Case No. D2004-0836; Leiner Health Servs. Corp. v.ESJ Nutritional Prods., FA 173362 (Nat. Arb. Forum September 16, 2003); PeterFrampton v. Frampton Enterprises, Inc.,WIPO Case No. D2002-0141. Accordingly, the Respondent’s use of the Complainant’s name and goodwill is clearly a prohibited, opportunistic use, and the Respondent has no rights or legitimate interest in the disputed domain name.
Once the Complainant alleges that the Respondent has no right or legitimate interest in the disputed domain name, the burden shifts to the Respondent to show by “concrete evidence” that it has rights or legitimate interests in the domain name at issue. Kate Spade, L.L.C. vs. Darmstadter Designs, WIPO Case No. D2001-1384 citing Document Technologies Inc. vs. International Electronic Communications, Inc.,WIPO Case No. D2000-0270; (“Concrete evidence constitutes more than mere personal self-serving assertions…Evidence in the form of documents or third party declarations should be furnished in support of such assertions.” Id. citing Do The Hustle, L.L.C. vs. Tropic Web, WIPO Case No. D2000-0624.). The Respondent has been notified of the illegitimate use of the disputed domain name by the Complainant, and no evidence supporting legitimate use has been presented by the Respondent, nor could the Respondent possibly have such evidence. The Respondent has registered the disputed domain name with the clear intent of commercial gain off the Complainant’s name and goodwill. Conclusively, the Respondent has made no lawful use of the disputed domain name and cannot possibly use it legitimately in the future as the Complainant has long established rights in and to LA QUINTA in connection with hotel services, including in Daytona Beach, Florida where the Complainant operates La Quinta hotels. iii. The domain name was registered and is being used in bad faith.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Under widely accepted UDRP case doctrine first established in Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the bad faith element was defined to have two subcategories, bad faith registration and bad faith use of the disputed domain name. Bad Faith Registration
Here, the Respondent registered the disputed domain name in bad faith. “Registration of a domain name identical to Complainant’s mark, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).” See Digi Int’l v. DDI Sys., Claim No. FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when respondent reasonably should have been aware of complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"). 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 Policy ¶ 4(a)(iii). See LaSalle BankCorporation v. Domain Active Pty. Ltd., FA 257756 (Nat. Arb. Forum June 28, 2004), citing Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also See Digi Int’l v. DDI Sys., Claim No. FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).
Here, the registration of the disputed domain name, which wholly incorporates the Complainant’s trademark for LA QUINTA by someone with no connection with the Complainant, is evidence of opportunistic bad faith. Moreover, because the ultimate effect of any use of the disputed domain name will be to cause confusion with La Quinta, the use and registration of the disputed domain name must be considered to be in bad faith. See Fairmont Hotels & Resorts (U.S.) Inc., v. 613181 BC Ltd,WIPO Case No. D2001-1050 , citing Embratel Empresa Brasileira de Telecommunicacoes S.A. v. McCarthy,WIPO Case No.D2000-0164; Forte (UK) Ltd. v. Eugenio Ceschel,WIPO Case No. D2000-0283. Furthermore, where the mark is obviously connected to the Complainant—as the La Quinta mark is with the disputed domain name—the use of the domain name suggests opportunistic bad faith. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374.
Here, the Respondent’s registration of the disputed domain name could not be by mere chance. Explicitly, where the disputed domain name is almost exactly the same as the registered trademarks of a high profile mark which undertakes considerable Internet commerce, it is inferred that the Respondent did not register the name by mere chance. See HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT,WIPO Case No. D2006-0439. This leads to the conclusion that the registration was undertaken in bad faith. Id., citing Axel Springer AG v.Jack Tubul,WIPO Case No. D2005-0554. Under the above stated law, the Respondent clearly registered the disputed domain name in bad faith, intending to capitalize upon the Complainant’s goodwill in its trademark for LA QUINTA. Explicitly, the fact that the Complainant’s trademarks are widely known is evidence of bad faith. See VeriSign Inc. v. Bin g Glu / G Design,WIPO Case No. D2007-0421 (WIPO, May 28, 2007). At the time the disputed domain name was registered, the Complainant had made widespread and substantial use of its LA QUINTA mark since 1969.
The Complainant’s website had been operational long before Respondent registered the disputed domain name in 2004. The high profile presence and fame of La Quinta, coupled with the Complainant’s global registration and use of its marks, support an imputation of knowledge of the Complainant’s trademark rights on the Respondent at the time of registration. Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, L.L.C. vs. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028.
Conclusively, the widespread fame of the LA QUINTA trademark and the Complainant’s prior domain name registrations and trademark registrations lead to the necessary conclusion that the Respondent registered and is using the domain name with actual knowledge of the Complainant’s trademark rights and thus in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Bad Faith Use
The Respondent’s use of the disputed domain name to promote the services of La Quinta, without authorization, license or permission to do so, as well as the services of La Quinta’s competitors, likely for the Respondent’s own profit, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Explicitly, the Respondent’s website linked to the disputed domain name directs users to competitors of the Complainant directly such as and through travel related websites such as , and as well as to La Quinta’s official site itself, again with no permission or license to do so. See Annex 8. This type of parking has consistently supported a finding of bad faith use of the domain name. “As determined by prior UDRP decisions, parking a domain name in such a manner for financial gain is common among cyber-squatting cases and may demonstrate bad faith on the part of the registrant. See Maplin Electronics Limited v. Lee Jeongsoon,WIPO Case No. D2006-0011; Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584 ; Rich Products Corporation v. Cynthia Kirk, WIPO Case No. D2007-0871.
Paragraph 4(b)(iv) of the Policy requires that such “parking” activity connected to a disputed domain name be for “commercial gain.” Here it is likely that the Respondent is obtaining “click-through fees” for diverting Internet users to competing websites while parking the domain name on a web page filled with commercial advertising links, and this has also been held to constitute commercial gain for purposes of Policy, para. 4(b)(iv). See, e.g., Disney Enterprises, Inv. v. PX Publishing Ltd., NAF Claim No. FA0506000506604.(NAF August 18, 2005). The fact that Respondent’s webpage is a “link farm” and hosts a list of sponsored links demonstrates that Respondent intentionally uses the disputed domain name aiming to profit from the Complainant’s renowned trademark by attracting Internet users. VeriSign Inc. v. Bin g Glu / G Design,WIPO Case No. D2007-0421. Because Internet users will mistakenly go to Respondent’s site when seeking the Complainant’s site or services sold under the Complainant’s “La Quinta” mark, and because the Respondent will then profit from the referrals of these users, the Respondent’s use of the disputed domain name is in bad faith. The confusion created by the disputed domain name causes potential customers of the Complainant to choose other hotel services than the Complainant, thereby disrupting the Complainant’s business. VeriSign Inc. v. Bin g Glu / G Design,WIPO Case No. D2007-0421.
Explicitly, the Respondent’s choice in the disputed domain name supports bad faith use just as it supports bad faith registration above. There is no plausible reason for the Respondent’s selection of the domain name other than as a deliberate attempt to profit from the confusion generated with the Complainant’s LA QUINTA trademark. See MasterCard International Incorporated v. Unicorn Multi-Media, Inc.,WIPO Case No. D2007-0688.
The Respondent is profiting from the Internet traffic it is diverting to websites other than the Complainant’s and therefore is not making a bona fide offering of its own goods or services. In fact, the Respondent offers no goods and services of its own, but only a “link farm” connected to the Complainant’s industry and name. As such, the Respondent’s use of the websites is wholly in bad faith.
Finally, the fact that the Respondent registered this domain name approximately seven (7) (emphasis added) years ago and has done nothing with the website but profit from links to the Complainant’s competitors for the past seven years further supports bad faith use of the instant domain name. Mary-Lynn Mondich & Am. Vintage Wine Biscuits, Inc. v. Shane 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); ARTISTdirect, Inc. v.OLDG,WIPO Case No. D2000-1367 (finding bad faith where the Respondent argued that it was in the process of creating a website where slightly over two years’ time had passed since registration). Clearly, in the present case, where seven (7) years have passed since registration—far longer than the two years of non-use cited as evidence of bad faith use in the above cases—there can be no finding but bad faith registration and use. Conclusion
The Respondent has usurped the Complainant’s name and goodwill for its own profit. The Respondent has even gone so far as to link to the Complainant’s very own website from its website associated with the disputed domain name, conclusive evidence that the Respondent is aware of the Complainant’s mark and has knowingly infringed upon it. Essentially, the Respondent has created a website using the Complainant’s trademarked LA QUINTA name and containing links to both the Complainant’s website and websites offering identical services of the Complainant for the purpose of profiting from the Complainant’s established reputation and goodwill. The preceding facts and legal authority establish the Complainant’s contention that (1) the Respondent’s domain name is identical or confusingly similar to the Complainant’s mark; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings. 6. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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
(ii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall 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 accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the Respondents failed to file a Response, the Panels’ decisions were based upon the Complainants’ assertions and evidence, as well as inferences drawn from the Respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, a Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. In this case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a disputed domain name incorporates a Complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainants’ well-known and well-established registered trademark LA QUINTA. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information on the Complainant’s company and its services marketed under its well-known registered trademark LA QUINTA.
The addition to the disputed domain name of the word ‘daytonabeach’, being descriptive of a place Daytona Beach (i.e. geographical), does not provide any distinguishing feature for trademark purposes. Indeed, it only adds to the confusion as the Complainant has hotels in this location, which it markets under the name of its well-known and well-established registered trademark LA QUINTA. See Harrods Limited v. Simon Harkin Travel,WIPO Case No. D2004-0546 in which the panel held that:
“Although the [d]omain [n]ame consists of the word “harrods” and the word “travel,” it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods,” which is the quintessential and distinctive part of the [d]omain [n]ame. See Harrods Limited v.Vineet Singh,WIPO Case No. D2001-1162, where the [p]anel held that ‘… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services’. See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the [p]anel held that ‘The [d]omain [n]ame consists of the word HARRODS plus a hyphen and the generic term ’poker’. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”.
The addition of a top level domain (gTLD) here, “.com”, to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity. See The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and well-established registered trademark LA QUINTA, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in and commercial use of the same since 1969. The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of the Respondent’s 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 before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
There is no evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and well-established registered trademark LA QUINTA. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known registered trademark LA QUINTA inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its services (see further on this point below). Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known and, therefore, valuable registered trademark LA QUINTA and also the valuable goodwill that the Complainant has established in this trademark through advertising and commercial use of the same over many years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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] web site or location or of a product or service on [its] web site or location.”
Based on the record, the Panel considers that the Respondent, by registering the disputed domain name, is trading unfairly on the Complainants’ valuable goodwill established in its well-known and well-established registered trademark LA QUINTA.
By registering and using the disputed domain name incorporating the well-known and well-established registered trademark LA QUINTA, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, see also Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.
Also, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record of the case file, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name, which incorporates the Complainant’s well-known and well-established registered trademark LA QUINTA, by chance, but on the basis of being aware of the notoriety of the Complainant ‘s trademark and its business activities in the hotel sector. Indeed, this reasonable inference is strengthened by the fact that the disputed domain name also incorporates the place name ‘daytonabeach’ where the Complainant has one of its Hotels, which are marketed under the trademark LA QUINTA. This, in the view of the Panel, is a further indication of bad faith on the part of the Respondent.
Further, as mentioned above, the failure of the Respondent to answer the two recent requests, of the legal representative of the Complainant to transfer the disputed domain name to the Complainant also suggests bad faith on the part of the Respondent. See America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 and the UDRP cases therein cited.
Finally, the failure also of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, as well as those advanced by the Complainant in its contentions set out above and supported by previous WIPO UDRP cases cited by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith. 7. Decision
For 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.
Ian Blackshaw
Sole Panelist
Dated: July 27, 2011
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