Complainant is La Quinta Worldwide, L.L.C. of Las Vegas, Nevada, United States of America (“U.S.”) represented by Gardere Wynne Sewell LLP, U.S.
Respondent is Paydues, Inc. of Santa Fe, New Mexico, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2012. On January 6, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2012. Respondent submitted an informal communication on January 11, 2012 indicating that he was “not the intended respondent for this claim.”
The Panel rejects Respondent’s assertion that it is “not the intended respondent for this claim [or Complaint].”
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on February 7, 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
Complainant has owned and operated hotels under the LA QUINTA trademark since 1968 and now has over 700 hotels globally, including locations in 42 states of the U.S., Canada and Mexico.
Complainant owns numerous trademark registrations worldwide evidencing exclusive rights to the mark LA QUINTA in connection with hotel and motel services, including U.S. Trademark Registration No. 0875802 (LA QUINTA) registered on August 26, 1969; Registration 1080641 (LA QUINTA), registered on December 27, 1977; Registration 1823440 (LA QUINTA INN), registered on February 22, 1994 and numerous other U.S. registrations. Complainant also owns foreign trademark registrations and applications for its LA QUINTA and LA QUINTA INN trademarks in over fifty (50) countries throughout the world and more than 50 domain names including the LA QUINTA mark, including , , , and to name just a few.
The disputed domain name was registered on July 7, 2011. 5. Parties’ Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Aside from the aforementioned trademarks registered in the U.S. and in over fifty (50) countries abroad, Complainant has spent significant amounts in advertising and promoting its LA QUINTA trademarks globally. The disputed domain name is confusingly similar to its registered LA QUINTA trademarks, which it has continuously and exclusively used since 1968 in connection with its hotel and motel services, because it incorporates the LA QUINTA mark in its entirety. The addition of the descriptive term “franchise” to the LA QUINTA mark does not distinguish the disputed domain name from the LA QUINTA trademarks. The disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent is not commonly known by or affiliated with the disputed domain name. There is no evidence of Respondent’s use, or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent is using to create a false sense of association, affiliation, or sponsorship with Complainant, and Complainant has never authorized Respondent’s use of its LA QUINTA trademarks.
Respondent has made no lawful use of the disputed domain name and Respondent’s failure to make any use of the disputed domain name since registration is evidence of a lack of legitimate use. Therefore, Respondent has no right or legitimate interest in the disputed domain name.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
At the time that Respondent registered the disputed domain name, Complainant had widespread, extensive use and advertisement of its LA QUINTA mark. The high profile presence and notoriety of the LA QUNITA brand, coupled with the federal trademark registrations support a finding that Respondent was clearly aware of Complainant and registered the disputed domain name for the purpose of profiting from Complainant’s name and goodwill.
Respondent has been found to have registered and used in bad faith several other domain names containing the trademarks of third parties pursuant to several other UDRP complaints and is a serial cybersquatter as evidenced by domain name decisions against Respondent including: Hardee’s Food Systems, Inc., Carl Karcher Enterprises, Inc. v. Jason Rager, Paydues Inc.,WIPO Case No. D2011-1905; Two Men and a Truck / International, Inc. v. Jason Rager / Paydues Inc.,WIPO Case No. D2011-1312; and PFIP, LLC v. Paydues Inc, NAF Claim No. 1411907.
Respondent has not made good faith use of the disputed domain name as it does not resolve to a website with content. In Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, it was established that such inaction may constitute bad faith. Complainant contends that the totality of the circumstances, namely, (i) Respondent having registered Complainant’s trademark in its entirety, (ii) the mark being widely known and was known at the time of the disputed domain name’s registration, (iii) where Respondent has not responded to Complainant’s numerous communications, and (iv) where Respondent has made no use of the disputed domain name since its registration, constitutes bad faith registration and use of the disputed domain name. B. Respondent
Respondent submitted an informal communication on January 11, 2012 indicating that it was not the intended Respondent for this claim. It does not say why it is not the intended Respondent. The Complaint was sent to the correct email address for the disputed domain name registrant, Paydues, Inc., which registrant and address was confirmed by the Registrar, Go D, Inc. Respondent appears to have been properly identified and notified of the Complaint.
Respondent did not reply to Complainant’s contentions and has thereby defaulted. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; See paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these 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:
1) 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; and,
2) that the respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
As indicated before, the record reflects that Complainant properly provided all of Respondent’s available contact information as required by paragraphs 3(b) and 2(a) of the Rules. The record also reflects that the Center gave actual notice to Respondent ([…]@ and postmaster@) of the filing of the Complaint in compliance with paragraph 2(a) of the Rules. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name, consisting of Complainant’s distinctive service mark and a word (“franchise”) descriptive of some of the services which Complainant offers in connection to its marks and hotel/motel services, is confusingly similar to Complainant’s LA QUINTA and LA QUINTA INN marks. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kunf Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. B. Rights or Legitimate Interests
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. See National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.1.
In order for Respondent to demonstrate rights or legitimate interests in the disputed domain name, it must show:
“(i) before any notice to you 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 (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 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.”
In the present case, the evidence suggests that (i) Respondent has not used or prepared to use the disputed domain name with a bona fide offering of goods or services before any notice of the dispute; (ii) Respondent has never been commonly known by the disputed domain name and Complainant has never licensed nor otherwise permitted Respondent to use its LA QUINTA service mark or to apply for any domain name incorporating the mark nor is there any relationship between Complainant and Respondent; and (iii) Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Complainant’s allegations of bad faith are not contested. It is improbable that Respondent was unaware of Complainant’s trademark rights when the disputed domain name was registered on July 7, 2011. The LA QUINTA marks are very well-known and have been in use in connection with hotel and motel services offered to the public since 1968. In addition, the Respondent’s listed address suggests that Respondent resides in the U.S. where Complainant has a majority of its locations and advertises its trademarks in connection with its said services.
The evidence shows that the current disputed domain name resolves to a site that has no content. Nonetheless, “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; see McDonald’s Corporation v. Easy Property,WIPO Case No. D2006-1142; Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877.
Finally, Respondent’s prior registration of several domain names all of which contained trademarks of others presents both a pattern and history that further indicates bad faith. See E-Z Rent-A-Car, Inc. v. Domain Administration Limited, David Halstead,WIPO Case No. D2007-0647.
Accordingly, the Panel finds that the disputed domain name “is registered and is being used in bad faith” pursuant to the Policy. 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 Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: February 22, 2012
Full & Egal Universal Law Academy