The Complainant is La Quinta Worldwide L.L.C. of Las Vegas, Nevada, United States of America represented by the lawfirm Lydecker Diaz, United States.
The Respondent is SMK, Badarudin Jaafar of Melaka, Malaysia. 2. The Domain Name and Registrar
The disputed domain name (the “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 6, 2012. On January 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and, by a second email, a request that the Registrar maintain the status of the Domain Name notwithstanding its imminent expiry on January 9, 2012. On January 9, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent named in the Complaint is listed as the registrant and providing the contact details and, in a separate email, confirming that it would maintain the status of the Domain Name notwithstanding its expiry date.
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”).
The Center carried out a WhoIs search in respect of the Domain Name on January 11, 2012 which established that, on January 10, 2012, the Domain Name had been renewed to January 9, 2013. That WhoIs search also disclosed that the name of the registrant of the Domain Name is Badarudin Jaafar. The Registrar’s verification response indicated that the registrant of the Domain Name is SMK and the administrative contact for the Domain Name is Badarudin Jaafar, which the Panel believes is incomplete. Accordingly, all references to “the Respondent” will be therefore be references to Badarudin Jaafar.
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 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2012. In response, the Respondent transmitted an email to the Center on February 6, 2012, saying “what must i do” [sic] in response to which the Center sent an email to the Respondent attaching the Complaint and advising the Respondent that it could file a late response. No further communication from the Respondent was received.
The Center appointed William P. Knight as the sole panelist in this matter on February 6, 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
Since 1968 the Complainant has owned and operated hotels in the United States under the name “La Quinta”. “La Quinta” means “the fifth” in Spanish but, due to its historical use as a reference to a farm that is rented at one fifth of its income, has come to mean “country house” or “villa” in Spanish. The Complainant has numerous trademark registrations in the United States and in other countries, although not in Malaysia, in respect of hotel and motel services. It also has registered numerous domain names including the words “La Quinta”.
The Domain Name was registered on January 9, 2011 but has never been used. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(a) of the Policy, the Complainant asserts:
(i) that the Domain Name is confusingly similar to its LA QUINTA trademark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant says that the addition of the word “motel” in the Domain Name does nothing to distinguish the dominant element of the Domain Name, namely the word “laquinta”.
The Complainant says that a conclusion may be drawn that the Respondent has no rights or legitimate interests in respect of the Domain Name from the Respondent’s failure to use, or to show any genuine preparations to use, the Domain Name for a legitimate purpose. The Complainant says, further, that “Respondent has been notified of the illegitimate use of the disputed domain names [sic], and no evidence supporting legitimate use has been presented by Respondent”, by which it would appear that the Complainant refers to a letter from the Complainant’s attorneys dated November 21, 2011 to the then registrant of the Domain Name, the proxy service known as Domains By Proxy, LLC, demanding a transfer of the Domain Name. Domains By Proxy, LLC responded by email dated December 20, 2012 informing the Complainant’s attorneys of the contact address (but not the name) of its client having the beneficial interest in the Domain Name, which was that given by the Respondent in its registration. There is in fact no evidence of any communication by the Complainant with the Respondent.
The Complainant says that, by virtue of its operation of hotels in the United States under the LA QUINTA trademark, expenditure in respect of marketing (of which it provided no supporting evidence), its trademark registrations and its domain name registrations, it has an international reputation in its name and the LA QUINTA trademark and, indeed, that LA QUINTA is a “well-known mark”. As a consequence, the Complainant says, registration of the Domain Name by the Respondent must have been with knowledge of the longstanding use of the LA QUINTA trademark by the Complainant and hence in bad faith. The Complainant further says that this is “compounded with the fact that the disputed domain name diverts to a website which links to Complainant itself”, of the occurrence of which there is no evidence whatsoever and which is in any event inconsistent with the submission that there has been no use of the Domain Name at all. The Complainant says that the continuing failure to make any use of the Domain Name at all is evidence of use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy. Apart from the bare and undisputed facts, the Panel notes the many of the claims in the Complaint went unsupported and the authorities referred to were unhelpful, inapposite and/or tendentious.
However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond than if he had chosen to take advantage of the opportunities afforded to him, expressly, by paragraph 4(c) of the Policy.
Paragraph 15(a) of the Rules instructs the Panel to decide a 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 applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent; see Alcoholics Anonymous World Services, Inc. v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011 among numerous other UDRP decisions. The Panel may, also, supplement the submissions of the Complainant with matters of public record that are readily available to it, even when the Complainant has not made the minimal effort required to bring such matters expressly to the attention of the Panel; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.5. A. Identical or Confusingly Similar
As to element (i) of paragraph 4(a) of the Panel, the Panel notes that the determination of confusing similarity is a factual one which must be satisfied by making a side-by-side comparison of the Complainant’s trademark LA QUINTA and the Domain Name, taking into account the degree of aural, visual, or conceptual similarity between the two, the similarity of the goods and services for which they are used and the inherent or acquired distinctiveness of the trademark, as well as issues relevant to language; see Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl,WIPO Case No. D2001-0079.
Placed side-by-side, the similarity of the LA QUINTA trademark and the Domain Name is self-evident. The addition of the generic word “motel” does nothing to distinguish the Domain Name, and only tends to emphasize that any likely use made of the Domain Name would target users of motel services such as those offered by the Complainant.
The Panel therefore finds that the Complainant has sufficient trademark rights and that the Domain Name is confusing similar to the Complainant’s LA QUINTA trademark. B. Rights or Legitimate Interests
In the absence of any explanation from the Respondent, it is impossible to know how the Respondent happened upon so similar a word to the Complainant’s LA QUINTA trademark. The trademark is a Spanish expression, which does not appear to have any meaning in Bahasa Malaysia, the official language of Malaysia, or in English, which is also commonly spoken in Malaysia.
In such circumstances, and only by virtue of the Respondent’s failure to give any explanation to justify his selection of the Domain Name, combined with the fact that the use of the English word “motel” in the Domain Name would appear to indicate that the Respondent was somehow aware of the Complainant and its business, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that may indicate registration and use in bad faith. None of the specific examples given in paragraph 4(b) of the Policy may be found here, but previous decisions under the Policy have given some guidance regarding the conduct which might be regarded as evidencing the required bad faith outside the examples given in paragraph 4(b); see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Club Méditerranée S.A. v Clubmedical,WIPO Case No. D2000-1428; Time Inc v Chip Cooper,WIPO Case No. D2000-1342. Neither these, nor the UDRP decisions cited by the Complainant, support the conclusion that non-use alone is sufficient to establish registration and use in bad faith. Likewise, the Complainant cannot rely, as it does, on a claim that “Respondent has not responded to Complainant’s numerous communications” as there are none in evidence.
What these authorities establish is that a combination of circumstances and behaviors on the part of a respondent who has made no use of a disputed domain name may give rise to a finding of registration and use of that domain name in bad faith. In the Nuclear Marshmallows decision referred to above, the panel found the required bad faith in:
“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
In Red Nacional De Los Ferrocarriles Espanoles v. Ox90 WIPO Decision D2001-0981, a majority of the panel observed:
“Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith. Those circumstances involve the Respondent registering the Domain Name with intent to damage the Complainant in some way or to take unfair advantage of the Complainant or the Complainant’s goodwill. We believe that in this situation Respondent deliberately registered the Domain Name knowing, or at least strongly suspecting, that the Domain Name was a trademark of another, which is not good faith under the UDRP. Whether Respondent actually offered to sell the Domain Name, or was just waiting for an offer to buy it back, is not relevant under the unique facts of this case.
The Panel holds that where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.”
Considering these criteria in this case:
(i) the Panel is not satisfied that the Complainant’s trademark LA QUINTA is a well-known mark outside the United States. There is no evidence of any business outside the United States using this trademark. There are only trademark registrations. There is no reason to believe that a Malaysian person, such as the Respondent, would be aware of the Complainant and its trademarks and there is no registration of LA QUINTA as a trademark in Malaysia, according to the Complainant’s evidence.
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the Domain Name.
(iii) the information given in its registration, specifically SMK and Ade Putra when considered together, appears to refer to a national high school in Melaka (“SMK” stands for “Sekolah Menengah Kebangsaan”, meaning “national high school” in Bahasa Malaysia). That alone would not be an adequate address, but the problem of address is compounded by the fact that the address of this high school is not in the Masjid Tanah district of Melaka, as stated in the registration, but some little distance away, in another area. On the other hand, the Respondent did receive email communications from the Center and responded (in English). However, it is a reasonable conclusion from this that the Respondent was seeking to conceal his real address.
(iv) the use of the word “motel” in the Domain Name would suggest that the Respondent registered the Domain Name knowing of the Complainant and its trademark LA QUINTA.
(v) likewise, the Respondent appears to have renewed the registration in the face of the matters raised by the Complaint, although it is possible that the Registrar did so as a means of complying with the request of the Center to maintain the registration and it is possible that the Respondent had not received the Complaint or appreciated its import at the time of renewal.
In these circumstances, the Panel is prepared to conclude, in the absence of the Respondent’s reply, and on the balance of probabilities, that the Domain Name was registered and is being used in bad faith. 7. Decision
In the light of the findings in paragraph 6 above, the Panel accordingly determines in accordance with paragraph 15 of the Rules that the Domain Name be transferred to the Complainant in accordance with paragraph 4(i) of the Policy.
William P. Knight
Sole Panelist
Dated: February 10, 2012
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