The Complainant is La Quinta Worldwide, LLC of Las Vegas, Nevada, United States of America, represented by Lydecker Diaz, United States of America.
The Respondent is Andirich, Andi Perdana of Sumatra Utara, Indonesia / WhoisGuard Protected of Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2011. On October 5, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2011, the Registrar 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 October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2011. Due to an administrative oversight, the filing of the Response was later re-set to November 22, 2011. The Respondent did not file a Response.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on November 29, 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.
On November 29, 2011, the Center received from the Complainant a request to amend its Complaint to add another domain name. In an email communication dated November 30, 2011, the Center informed the parties that this request was declined by the Panel. The Panel sets forth its reason for declining the Complainant’s request in Section 6 of this Decision. 4. Factual Background
The Complainant has submitted evidence that it is the owner of the following trademark registrations in the United States (“U.S”):
- LA QUINTA with U.S. registration No. 0875802 and registration date August 26, 1968
- LA QUINTA with U.S. registration No. 1080641 and registration date December 27, 1977
- LA QUINTA INN with U.S. registration No. 1823440 and registration date February 22, 1994
- LA QUINTA INN with U.S. registration No. 1841032 and registration date June 21, 1994
In addition to the trademark registrations above, the Complainant has submitted evidence of numerous additional trademark registrations in the United States and in over fifty other countries, including Indonesia where the Respondent is located.
The disputed domain name was created on March 21, 2011. 5. Parties’ Contentions A. Complainant
The Complainant has operated its hotels under the registered trademark LA QUINTA since 1968. The Complainant owns, operates, manages and franchises over 65,000 hotel rooms, employs over 9,000 employees. The Complainant owns, operates, manages and franchises over 700 hotels in 42 states in the United States, Canada and Mexico.
The Complainant has registered and applied for numerous trademarks, both in the United States and in over fifty countries, including Indonesia which is the country of residence of the Respondent, as well as registering numerous domain names, to protect and promote the brand globally. The Complainant invests significant amounts of resources in advertising and promoting the LA QUINTA trademarks and domain names, including .
On August 10, 2011 and on August 18, 2011, the Complainant contacted the Respondent and requested a transfer of the disputed domain name . The Respondent did not reply to the Complainant’s letters.
The trademark LA QUINTA INN and the disputed domain name create the same overall impression. The disputed domain name incorporates the Complainant’s trademark LA QUINTA INN in its entirety. The 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. See for example Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Both the spelling and the pronunciation of the key terms in the disputed domain name and the trademark are identical. Clearly, the disputed domain name and the trademark are so identical in sight and sound that the two are likely to be confused.
The Respondent’s use of a hyphen to separate the terms “laquinta” and “inns” does not make a sufficient difference between the disputed domain name and the Complainant’s trademark.
The Respondent has a history of registering the Complainant’s trademarks as domain names. See La Quinta Worldwide, L.L.C. v. Andi Perdana, Andirich,WIPO Case No. D2011-1279. In that decision, the Respondent registered the domain name which wholly incorporated the Complainant’s trademark. The panel ruled that the Respondent was well aware of the Complainant’s worldwide reputation for hotel and motel services when the Respondent combined the trademark with the word “motel.”
The Respondent is not commonly known by or affiliated with the disputed domain name. The Respondent has made no legitimate use of the disputed domain name since its registration. The Respondent has no obvious connection with the disputed domain name and has not used the website, to which the disputed domain name resolves, for any legitimate business or enterprise since its registration in March of 2011. The confusion created by the disputed domain name is likely to divert customers looking for Complainant’s services online.
The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name. The Respondent is using the trademark misleadingly to divert consumers and is tarnishing the trademark at issue. Currently the website to which the disputed domain name resolves is inactive but initially it contained inappropriate adult material of a sexual nature. (Annex 7 to the Complaint). Thus, the Respondent is making no use of the disputed domain name, aside from diverting potential customers from the Complainant’s website due to the confusingly similarity between the Complainant’s trademark LA QUINTA INN and the disputed domain name .
The Respondent is tarnishing the Complainant’s trademark by using it without permission and not in connection with the Complainant’s services, and by displaying inappropriate sexual content on the site in a way which is likely to detract potential Internet users mistakenly away from the Complainant’s site and services. The disputed domain name is so confusingly similar to the Complainant’s family of trademarks that it falsely appears to be part of it, yet has no affiliation with Complainant. The Respondent’s use is diverting potential customers searching for Complainant away from Complainant’s actual sites. The Respondent clearly registered the disputed domain name knowing that it would generate a great deal of traffic from Internet users searching for the Complainant’s websites. Such use of the trademark is not a legitimate or fair use.
The Complainant is the owner of the trademark registration LA QUINTA in Indonesia with registration No. 372248/ IDM000077503 since October 1996. Indonesia is the Respondent’s listed country of residence. A trademark registration in Indonesia along with the Complainant’s extensive and widespread use of the LA QUINTA trademarks worldwide support the view that the Respondent knew or should have known the Complainant’s trademark rights at the time of the registration of the disputed domain name.
The Respondent’s use of the disputed domain name to promote the inappropriate content contained on the website, without license or permission, likely for the Respondent’s own profit, is evidence of bad faith registration and use. The disputed domain name was being used with the intent to deceive consumers seeking to reach the Complainant’s official website. Instead, the confusingly similar, if not identical, website led consumers to a website containing inappropriate content of a sexual nature, including nude women. The Respondent’s use of the disputed domain name to divert consumers to a pornographic website is evidence of bad faith.
The Respondent has usurped the Complainant’s name and goodwill for its own profit, something which has tarnished the Complainant’s name and goodwill. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As indicated in Section 3 (Procedural History) of this Decision, the Complainant filed a request to amend the Complaint to add the domain name allegedly also registered to the Respondent. The Panel notes that this domain name was created on March 21, 2011, or almost seven months before the Complaint was filed on October 4, 2011.
In denying the Complainant’s request, the Panel refers to Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales,WIPO Case No. D2011-0729, where the panel held as follows:
“If the Panel were to grant Complainant’s request, it would cause substantial delay in the final resolution of this dispute. The Center would have to submit new Registrar Verifications, and the Respondent would have to be given 20 days to respond to Complainant’s claims that these domain names are identical or confusingly similar to its trademarks, that Respondent has no legitimate interest in these domain names, and that Respondent registered and used them in bad faith. Had this request been made shortly after the filing of the initial complaint, then the amendment likely would have been acceptable, as it would have caused neither prejudice nor delay. That, in fact, was the circumstance in Maruti Udyog Ltd. v. Subba Raju,WIPO Case No. D2000-1036 (Jan. 30, 2001), and Louis Vuitton Malletier v. Somsak Sooksripanich,WIPO Case No. D2000-0866 (Nov. 3, 2000), the two cases on which Complainant relies in its motion. The request might also have been acceptable if it were made shortly after the domain names were registered, especially if they were registered after the filing of the initial Complaint.”
The Panel further notes that paragraph 4.8 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions (“WIPO Overview 2.0”) which states that panels have in some cases been reluctant to grant such requests, where received only after appointment.
The Panel finds that the Complainant’s application to amend its Complaint to add the additional domain name should be declined. The Complainant is of course free to commence a fresh complaint relating to this domain name.
Regarding the disputed domain name and the Complaint at hand, the Panel is required to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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 the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of a large number of registered trademarks, including LA QUINTA and LA QUINTA INN. The disputed domain name incorporates the Complainant’s trademark LA QUINTA INN in its entirety with the addition of the letter “s”, commonly used as a plural signifier. As decided in previous UDRP decisions, the addition of a common plural signifier has been considered insignificant to the determination of the existence of confusing similarity. See for example Medtronic, Inc. v. ,WIPO Case No. D2001-1033.
Furthermore, the disputed domain name contains a hyphen between the words “laquinta” and “inns”. As held in previous UDRP decisions, the inclusion of a hyphen in a disputed domain name does not necessarily distinguish the domain name from a trademark in which the complainant has established rights. See for example Giorgio Armani S.p.A. v. lv kefeng,WIPO Case No. D2011-0740.
Having the above in mind, it is the opinion of this Panel that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made 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 prior to the dispute; or
(ii) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(iii) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registrations for LA QUINTA and LA QUINTA INN predate the Respondent’s registration of the disputed domain name . The Complainant has not licensed or in any way consented to the Respondent’s use of the trademarks in the disputed domain name.
From the evidence submitted in this case, it is clear that the Respondent initially used the disputed domain name, which is confusingly similar to the Complainant’s registered trademark, to display material of adult nature. (Annex 7 to the Complaint). There is no material in the case before the Panel that indicates that the disputed domain name currently resolves to any active website.
Although given the opportunity, the Respondent has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights similar to any of the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
There is no evidence indicating that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Furthermore there are no circumstances or evidence indicating that the Respondent intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
The fact that the Respondent has been subject to a previous administrative proceeding regarding the domain name containing the descriptive word “motel” indicates that the Respondent had or must have had knowledge of the Complainant’s business in the hotel and motel industry when registering the disputed domain name. See La Quinta Worldwide, L.L.C. v. Andi Perdana, Andirich,WIPO Case No. D2011-1279. In the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademarks at the time the Respondent registered the disputed domain name.
In addition, the Panel finds that the Respondent’s documented history of preventing the Complainant from fully reflecting its trademarks in corresponding domain names may constitute a pattern.
Furthermore, the evidence in the case before the Panel indicates that the disputed domain name, which is confusingly similar to the Complainant’s trademarks, previously resolved to a website containing adult material. The conduct of using the Complainant’s trademark as part of a domain name in order to expose Internet users to material of a pornographic nature is evidence of bad faith. See for example GA MODEFINE SA v. pumo, WIPO Case No. D2006-0619.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain name has been registered and used 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 domain name be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Dated: December 2, 2011
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