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 Yuxiang Liu of Chongqing, China. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2012. On January 9, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed Domain Name. On January 9, 2012, GoD, LLC 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 January 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2012.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 13, 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 relevant facts are straightforward. Since 1968 the Complainant has owned and operated a hotel business under the name “La Quinta”. Nowadays it owns, operates, manages or franchises over 700 hotels in 42 states in the United Sates and employs over 9,000 employees. It has numerous registered trade marks such as, for example United States registrations for LA QUINTA, registration no. 0875802 and LA QUINTA INN, registration no. 1823440. It also has registered trade marks in respect of the words ”La Quinta” in over fifty other countries throughout the world, including the United Kingdom of Great Britain and Northern Ireland, Japan, Australia, Croatia, Czech Republic, Denmark, Finland, France, Germany, Hungary, India, Ireland (Republic of), Italy, Mexico, Netherlands Antilles, and Nicaragua. The Complainant’s trade marks for the words “La Quinta” are referred to below as the “Trade Marks”. The words “La Quinta” in Spanish translate into “Country House” in English.
The Complainant also owns numerous domain names including the word “laquinta” including for example , , , and .
The Domain Name was registered in November 26, 2010. The Complainant has received no response to correspondence sent to the Respondent. The evidence before the Panel as to what, if any, use has been made of the Domain Name by the Respondent appears to show it has simply been “parked” and resolves to a “holding page”. 5. Parties’ Contentions A. Complainant
The Complainant says that the Domain Name is identical or similar to the Trade Marks and the addition of the generic term “motel” adds nothing. It says the registration by the Respondent is opportunistic bad faith as it is clearly intended to take advantage of the Complainant’s well-known Trade Marks and its brand and reputation in the hotel industry. It says the Respondent has no rights in the name “La Quinta” and is not making any legitimate use of the name. It says the registration cannot have been by chance given the highly distinctive nature of its name and must have been in bad faith. It says the continued inactive holding of the Domain Name is also in bad faith. It cites a large number of previous UDRP decisions in support of these contentions. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant clearly has rights in the Trade Marks. “La Quinta” is a highly distinctive term and there is substantial evidence of its widespread use at least in the United States. The Complainant has registered trade marks in respect of these words in the United States and many other jurisdictions.
The Domain Name is similar to the Trade Marks in that it comprises the same words with the addition of the non-distinctive word “motel”. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a trade mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered trade mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the word “motel”) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189). The Panel accordingly finds that Domain Name is similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Domain Name. Accordingly the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
The Panel has not been provided with detailed evidence as to the size of the Complainant’s business in financial terms. However the Panel accepts that the evidence establishes the Complainant has been in business under its name in the United Sates at least since 1968 and has carried on that business on a very substantial scale with some 700 hotels operating under the name. In those circumstances, given the highly distinctive nature of the Complainant’s name, and absent any explanation from the Respondent, the Panel infers that Respondent should have been aware of the Complainant’s business and the Domain Name was chosen by the Respondent because it was similar to the Complainant’s name and suggestive of the Complainant’s business.
This is a case in which there is no evidence before the Panel of any use of the Domain Name, beyond the fact that it resolves to a holding web page. The consensus view of UDRP panelists in these types of cases is that the lack of active use of the Domain Name in question does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include the complainant having a well-known trade mark, no response to the complaint, the concealment of identity and the impossibility of conceiving a good faith use of the disputed domain name. Relevant decisions include Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; and Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131.
In the present case the distinctive nature of the Trade Marks, and the evidence as to the extent of the reputation the Complainant enjoys in the Trade Marks, mean that the Panel concludes the Respondent was aware of the Complainant’s business when it registered the Domain Name. The Panel concludes that it is highly likely that the Respondent selected the Domain Name because of its similarity with the Complainant’s Trade Marks. The addition of the word “motel”, suggests to the Panel that the Respondent was deliberately choosing a name with a close and confusing connection to the Complainant’s business. The Panel finds it difficult to conceive of any use which the Respondent could make of the Domain Name which would be legitimate. Further the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
As a result, and applying the principles in the above noted decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Nick J. Gardner
Sole Panelist
Dated: February 24, 2012
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