The Complainant is La Quinta Worldwide, L.L.C. of Las Vegas, Nevada, United States of America, represented by Gardere Wynne Sewell LLP, United States of America.
The Respondent is VALUE-DOMAIN COM/Value Domain of Osaka, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2012. On January 4, 2012, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the disputed domain name. On January 6, 2012, Key-Systems GmbH dba 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, and additionally confirming that the language of the Registration Agreement was German. The Center sent a deficiency notification to the Complainant on January 19, 2012 providing the registrant and contact information disclosed by Key-Systems GmbH dba . The Complainant filed an amendment to the Complaint on January 19, 2012.
On January 16, 2012, the Center transmitted documents by email to the parties in both English and German regarding the language of proceedings. The Complainant submitted a request that English be the language of the proceeding on the following day. The Respondent did not comment on the language of the proceeding by the specified due date. Accordingly, the Center transmitted all of its case-related communications in both English and German, and indicated that it would accept a Response filed in either language.
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 January 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2012.
The Center appointed Torsten Bettinger as the sole panelist in this matter on February 20, 2012. 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 major hotel and motel chain which was founded in 1968. It has used the “LaQuinta” name in connection with its services since that time, and has held United States trademark registrations for the LA QUINTA mark since as early as 1969. It operates roughly 500 hotels in 40 states throughout the United States, Canada and Mexico, and employs approximately 9,000 individuals across its locations. The Complainant has also secured trademark protection in numerous international jurisdictions, and maintains a broad portfolio of domain names containing its mark. Some of these domain name registrations include the names of geographic areas or cities where their hotels are located, such as and .
The disputed domain name was registered on November 30, 2010, and currently resolves to an error page written in Japanese. From the Annexes to the Complaint, it appears that the domain name was previously used to display content related to a non-surgical remedy for enlarged eyelids, as well as pay-per-click advertisements, all written entirely in the Japanese language.
The Complainant sent two cease-and-desist letters to the Respondent in November of 2011 and, receiving no reply to either of them, thereafter proceeded to file the present Complaint. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements required by paragraph 4(a) of the Policy is satisfied.
With regard to the first requirement, under paragraph 4(a)(i) of the Policy, the Complainant states that the disputed domain name is identical or at least confusingly similar to its LA QUINTA trademark, and that the addition of the geographic term “Sevierville” does nothing to distinguish the disputed domain name from its mark. Furthermore, the Complainant states that the addition of this term, which corresponds to a town in Tennessee, United States where the Complainant maintains a hotel franchise, heightens the risk of Internet user confusion.
Concerning the second requirement of paragraph 4(a) of the Policy, the Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name as it has not been authorized to use the Complainant’s mark, is not using the disputed domain name in connection with a bona fide offering of goods and services, is not commonly known by a name corresponding to the disputed domain name, and is not making a legitimate noncommercial or fair use of the disputed domain name.
As to the final element of paragraph 4(a) of the Policy, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. Due to the Complainant’s longstanding use of its mark, and the clear connection between the mark and Complainant’s services, the Respondent’s registration of the disputed domain name constitutes opportunistic bad faith. Moreover, the full incorporation of the trademark in conjunction with one of the Complainant’s hotel locations makes it clear that the Respondent was aware of the Complainant at the time it registered the domain name. The Respondent’s use of the domain name, to attract Internet users to its own website for commercial gain, is evidence of bad faith use. Additionally, the Respondent has been involved in numerous prior UDRP decisions, and as such the Complainant alleges that the Respondent is a “serial cybersquatter”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
As a preliminary matter, the Panel notes that the Complaint has been filed in English while the disputed domain name has been registered through a Registration Agreement written in German. Pursuant to paragraph 11 of the Rules, the language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or subject to the Panel’s discretion. In certain situations including, for example, where a respondent can clearly understand the language of the complaint and where the complainant would be disadvantaged by being forced to translate, it may be appropriate for the language of the proceeding to remain consistent with the language of the complaint, even where it is different from the language of the relevant registration agreement. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0 (“WIPO Overview 2.0”), paragraph 4.3.
In this matter, the Respondent was furnished with an opportunity to object to the Complainant’s request that English be the language of the proceeding, provided by the Center in both English and German. The Respondent has elected not to reply. The Complainant has indicated that translation would incur substantial costs and delay to the proceeding, and further notes that the geographic location referenced in the disputed domain name, “Sevierville”, is a town in Tennessee, in the United States, where English is the predominant language. Accordingly, it appears to the Panel that the Respondent intended to target an English-speaking audience, thus indicating that the Respondent is familiar with the English language and would not likely be prejudiced by the issuance of a decision in English. This fact, in conjunction with the arguments put forth by the Complainant, and in the interest of expediency, leads the Panel to conclude that the proper language of the proceeding in this case is English. B. Identical or Confusingly Similar
The addition of a geographic term or place name, particularly where such location is connected to a complainant’s business operations, will not generally serve to distinguish a respondent’s domain name from the relevant trademark. See Inter-Continental Hotels Corporation v. James, dsgn factory,WIPO Case No. D2011-2046; Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; and La Quinta Worldwide, L.L.C. v. Texas International Property Associates,WIPO Case No. D2009-1436. In this case, the town name of “Sevierville”, located in Tennessee in the United States, has been appended to the Complainant’s LA QUINTA trademark. As the Complainant maintains a franchise hotel in this town, this combination may serve to heighten Internet user confusion.
Additionally, it is well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Panel thus finds that the disputed domain name is confusingly similar to the Complainant's LA QUINTA mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the consensus view among UDRP panelists that if a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may be deemed to lack rights or legitimate interests in the domain name. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its LA QUINTA trademark in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, or in the publicly available WhoIs, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. Additionally, as it would appear the Respondent has realized commercial gain from its website, either through the sale of a non-surgical cosmetic eyelid remedy or via pay-per-click revenue, the Respondent’s use of the disputed domain name neither constitutes a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Harry Winston Inc. and Harry Winston, S.A. v. Harry Pluviose,WIPO Case No. D2010-0210. The Respondent, although provided with instructions in both English and German (the language of the relevant registration agreement), has elected not to file any Response, and as such has not rebutted the arguments advanced by the Complainant.
Under these circumstances, the Panel is persuaded that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. D. Registered and Used in Bad Faith
The Complainant has demonstrated that its LA QUINTA trademark has been registered for over forty years, and widely used in commerce since as early as 1968. The Respondent elected to combine the full text of the Complainant’s trademark in conjunction with a geographic term corresponding to the location of one of the Complainant’s hotels, indicating that it must have been fully aware of the Complainant and its LA QUINTA mark at the time it registered the disputed domain name.
The Respondent has used the disputed domain name in connection with a website which apparently offered unrelated goods in addition to displaying numerous pay-per-click links. By fully incorporating the LA QUINTA mark in the disputed domain name, and using the disputed domain name in connection with its unrelated website content and pay-per-click ads, the Respondent was apparently attempting to divert Internet traffic intended for the Complainant’s website to its own website for commercial gain by creating a likelihood of confusion with the Complainant’s mark. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Harry Winston Inc. and Harry Winston, S.A. v. Harry Pluviose, supra.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met. 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.
Torsten Bettinger
Sole Panelist
Dated: February 28, 2012
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