The Complainant is La Quinta Worldwide, L.L.C. of Las Vegas, Nevada, United States of America (“United States”), represented by Lydecker Diaz, United States.
The Respondent is PrivacyP of Queensland, Australia / Pantages, Inc. of Caracas, Venezuela. 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 September 10, 2011. On September 12, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name. On September 27, 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 September 28, 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 amended Complaint on October 1, 2011.
The Center verified that the Complaint together with the amended 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 October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2011.
The Center appointed James McNeish Innes as the sole panelist in this matter on November 3, 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 has since 1968 operated hotels under its trademarked “La Quinta” name. It owns operates, manages and franchises over 700 hotels in 42 states in the United States, Canada and Mexico. It employs more than 9,000 people. The record demonstrates that the Complainant has a substantial number of trademark registrations incorporating the “La Quinta” name. In addition it has registered several domain names in connection with its services also incorporating the “La Quinta” name. The Complainant’s registrations have taken place over a period of 36 years. The disputed domain name was apparently originally registered on September 18, 2005. The Respondent is otherwise unknown as it has concealed its identity through PrivacyP. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following:
(a) It has registered numerous trademarks incorporating the LA QUINTA name in the United States and elsewhere. It has also registered similar domain names and maintains websites in connection with its hotels, motels and inns. It also spends significant amounts in advertising and promoting its brands.
(b) Due to the longstanding use and establishment of the trademarked “La Quinta” name it has developed a family of trademark rights over the name.
(c) “Quinta” is clearly the dominant portion of the trademarks LA QUINTA INN and LA QUINTA INNS AND SUITES!” of which a buyer is more likely to remember and associate with the “La Quinta” name. “Quinta” is also the dominant portion of the disputed domain name . Therefore, in analyzing whether is confusingly similar to LA QUINTA trademarks, the fact that it shares the dominant portion “Quinta” coupled with the shared term “inn” should be given considerable weight.
(d) Use of the Respondent’s clearly creates likelihood of confusion in that it takes the distinguishing and dominant portion of the Complainant’s trademark, LA QUINTA INN, and incorporates it into the disputed domain name. The Respondent’s use of the disputed domain name is identical and/or confusingly similar to the Complainant’s federally protected marks.
(e) The Respondent is not commonly known by or affiliated with the disputed domain name.
(f) The Respondent offers no services and makes no reference to a brand of its own, on the website 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, LA QUINTA INN, and/or LA QUINTA INNS AND SUITES trademarks.
(g) The Respondent has been notified of the illegitimate use of the disputed domain name, 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 can not possibly use it legitimately in the future. As such, the Respondent has no right or legitimate interest in the disputed domain name.
(h) The Respondent was clearly aware of the Complainant’s name when it created . This can be seen by the disputed domain name’s incorporation of Complainant’s identical trademark. In addition, the website contains references to the Complainant’s trademarks such as LA QUINTA and LA QUINTA RETURNS, lists “Extended Stay Hotel” which is a competitor of La Quinta, and lists several other hotel links such as “Reservations”, “Hotel Discount”, “Cheap Hotel”, “Hotels”, and “Hotel Deals” only to name a few. These references indicate that the Respondent was well aware of the Complainant’s hotels and the service industry associated with La Quinta and are therefore evidence of opportunistic bad faith.
(i) The fact that the Complainant’s marks are commonly recognized and that consisted entirely of references to the Complainant and to the hotel industry, clearly establishes that the Respondent was patently aware of the Complainant and its business, and sought to divert Internet users. Fort Knox National Company v Ekaterina Phillipova,WIPO Case No. D2004-0281.
(j) None of the links on the Respondent’s website lead to the Complainant’s website. This shows that the website was not created in an effort to advertise or to direct customers to the Complainant’s website and instead was merely profiting off of the goodwill and reputation of the Complainant. Therefore, it is clear that the Respondent created the website in bad faith.
(k) The Respondent has usurped Complainant’s names and goodwill for its own profit. Essentially, the Respondent has created a website using the Complainant’s trademarked “La Quinta” name for the purpose of profiting from Complainant’s hard earned reputation and good will. The facts and legal authority make it patently clear that (1) the Respondent’s disputed domain name is identical or confusingly similar to the Complainant’s mark; (2) the Respondent has no rights or legitimate interest in respect of the disputed domain name; and (3) the disputed domain name was registered and is being used in bad faith.
The panel finds that there is sufficient evidence on the record to support the Complainant’s contentions set out above. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(a) That the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(b) That the respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Two separate issues fall for consideration. (1) Does the Complainant have rights in the marks and is the disputed domain name identical or confusingly similar to any such marks? On the record the Complainant has established rights in its marks and registrations. It has also demonstrated continued commercial usage over the last 40 years.
The Complainant argues that the disputed domain name is identical or confusingly similar to its mark for the following reasons:
(a) The disputed domain name is confusingly similar to the dominant name in the Complainant’s trademarks.
(b) The only difference between the Respondent’s disputed domain name and the word “Quinta” in the Complainant’s trademarks is the addition of the non-descriptive word “inns.” The disputed domain name incorporates in full the dominant name in Complainant’s registered LA QUINTA trademarks.
(c) The disputed domain name incorporates a non-distinctive word and is confusingly similar to the Complainant’s trademark.
The Panel accepts the Complainant’s contentions. The disputed name is confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii):
(a) 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
(b) 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
(c) you [respondent] are making a legitimate non-commercial 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.
The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith.” For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(a) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(b) you have 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 you have engaged in a pattern of such conduct; or
(c) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The Respondent has made no Response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b). The Panel accepts the Complainant’s assertion that the Respondent has attempted to attract users to its websites by creating confusion with the Complainant’s mark. The Panel finds that the Policy, paragraph 4(a)(iii) as been satisfied. 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.
James McNeish Innes
Sole Panelist
Dated: November, 9 2011
Full & Egal Universal Law Academy