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 Privacy Ltd. Disclosed Agent for YOLAPT of the Isle of Man, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2012. On February 10, 2012, the Center transmitted by email to F a request for registrar verification in connection with the Disputed Domain Name. On February 13, 2012, F transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name.
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 February 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2012.
The Center appointed Jacques de Werra as the sole panelist in this matter on March 21, 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 owns, operates, manages and franchises over 700 hotels in 42 states in the United States, Canada and Mexico with over 65,000 hotel rooms and over 9,000 employees.
The Complainant owns various trademarks in the United States and in over 50 other countries containing LA QUINTA including the following United States trademarks (the Trademark):
- LA QUINTA, Registration 0875802, registered on August 26, 1969;
- LA QUINTA, Registration 1080641, registered on December 27, 1977;
- LA QUINTA INN, Registration 1823440, registered on February 22, 1994;
- LA QUINTA INN, Registration 1841032, registered on June 21, 1994.
The Complainant has further registered numerous domain names reflecting the Trademark that it uses in connection with its services which include the following domain names: , , , , , , , .
The Disputed Domain Name was registered on August 8, 2003. It is used in connection with a parking service, which provides links pointing to third party companies some of which are competing with the Complainant in the hotel industry as well as links pointing to the Complainant’s own websites.
The Complainant sent cease and desist letters to the Respondent on November 29, 2011, December 14, 2011, and December 19, 2011 to which no answer was given by the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant first claims that it is the owner of the Trademark and that the Disputed Domain Name is confusingly similar to the Trademark as it only differs from it by one single letter so that it constitutes a clear case of typosquatting (omission of the letter “n” in the Disputed Domain Name by comparison to the Trademark, whereby the term “Laquita” has no meaning in any language).
The Complainant further claims that the Respondent is not commonly known by the Disputed Domain Name as it does not offer any services and does not make any reference to a brand of its own affiliated with the Disputed Domain Name. The Respondent further does not make any legitimate, noncommercial and fair use of the Disputed Domain Name.
The Complainant finally alleges that the bad faith registration of the Disputed Domain Name by the Respondent is evidenced by the fact that the Respondent knew about the Trademark and the Complainant when it registered the Disputed Domain Name, as shown by the fact that the website associated with the Disputed Domain Name contains links to the Complainant’s own websites (thereby profiting from the Complainant’s name and goodwill). The Respondent’s bad faith also results from the misspelling of the Complainant’s Trademark in the Disputed Domain Name (typosquatting).
The bad faith of the Respondent further results from the involvement of the Respondent as respondent in numerous prior UDRP proceedings which were found against it. Such conduct shows that the Respondent has engaged in a pattern of registering domain names which are identical or confusingly similar to third party trade or service marks, with the purpose of preventing those third parties from using their trademark in a domain name which is the evidence of the registration and use of a domain name in bad faith under paragraph 4(b)(ii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by the Respondent 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 respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
Even if the argument of laches has not been raised by the Respondent (who did not participate in these proceedings), the Panel thinks of relevance to note from the outset that “[p]anels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), para. 4.10. A previous panel consequently held that there is no “meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name”. See Tom Cruise v. Network Operations Center / Alberta Hot Rods,WIPO Case No. D2006-0560; and Legislator 1357 Limited, Legislator 1358 Limited, Ian Fleming Limited v. Alberta Hot Rods,WIPO Case No. D2008-0832. On this basis, the Panel finds that the Complainant is in a position to invoke the protection granted under the Policy in this case, irrespective of the passing of time since the registration of the Disputed Domain Name by the Respondent which was made in 2003. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the Trademark in various jurisdictions including in the United States
A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name is clearly confusingly similar to the Complainant’s Trademark, particularly to its LA QUINTA INN trademark, the only difference consisting in the removal of the letter “n” in the Disputed Domain Name. The Panel notes in this respect that “[a] domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name”. WIPO Overview 2.0, para. 1.10. This is clearly the case here.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the Complainant bears the ultimate burden of providing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name, once the Complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which misspells the distinctive elements of the Trademark owned by the Complainant and uses it in connection with a pay-per-click landing page pointing to products of competitors of the Complainant in the hotel industry.
The Complainant has also established that the Respondent has not been commonly known by the Disputed Domain Name and that it is not making a legitimate or fair use of the Disputed Domain Name.
The Panel thus accepts the Complainant’s prima facie showing and finds that it was consequently up to the Respondent to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s absence of participation in these proceedings.
In addition, the Panel notes that the Respondent has used the Disputed Domain Name in connection with a link farm parking page pointing to the services offered by third parties which are in competition with the Complainant. As recognized by many UDRP panels, it is well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services which are competing with those of the trademark owner, does not establish rights or legitimate interests. See, e.g., Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2010-0925; O, Inc. v. Metro Media,WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah,WIPO Case No. D2007-1368; and Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name;
(ii) circumstances indicating that the Respondent registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark is distinctively identifying the Complainant and the Complainant’s services so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademark of the Complainant (this being further evidenced by the fact that the website associated with the Disputed Domain Name also points to the Complainant’s own websites). The Respondent’s bad faith in the registration and use of the Disputed Domain Name is confirmed by the fact that the Disputed Domain Name is used in connection with a pay-per-click parking page pointing to services some of which are offered by the Complainant’s competitors. Such use has consistently been held as a bad faith registration and use of a domain name. See, e.g., Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474; Bayerische Motoren Werke AG v. bmwrider llc,WIPO Case No. D2008-0610; Roust Trading Ltd. v. AMG LLC,WIPO Case No. D2007-1857; Express Scripts Inc. v. Windgather Investments Limited / Mr. Cartwright,WIPO Case No. D2007-0267; Sports Saddle, Inc. v. Johnson Enterprises.,WIPO Case No. D2006-0705. The Panel also notes that the Respondent was a respondent in many prior cases where decisions were made in favor of the respective complainants in circumstances which appear similar to the ones existing in the present case. This shows that the Respondent has engaged in a pattern of registering domain names which are identical or confusingly similar to third party trade or service marks, with the purpose of preventing those third parties from using their trademark in a domain name which constitutes bad faith under paragraph 4(b)(ii) of the Policy.
For these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of 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 domain name be transferred to the Complainant.
Jacques de Werra
Sole Panelist
Dated: April 4, 2012
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