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 Andi Perdana, Andirich of Medan, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 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 eNom a request for registrar verification in connection with the disputed domain name. On February 13, 2012, eNom 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 February 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2012.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 12, 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 has owned, operated and franchised hotels trademarked “La Quinta” for 43 years, extending currently to over 65,000 rooms principally in the United States, Canada and Mexico.
The Complainant holds 17 registrations and applications for trade or service marks (hereafter, trademarks) at the United States Patent Office, or later United States Patent and Trademark Office (collectively, USPTO), mostly for hotel services in International Class 43, of which the following are representative:
LA QUINTA, registration no. 0875802, registered on August 26, 1969;
LA QUINTA, registration no. 1080641, registered on December 27, 1977;
LA QUINTA INN, registration no. 1823440, registered on February 22, 1994;
LA QUINTA INN, registration no. 1841032, registered on June 21, 1994;
LA QUINTA INN & SUITES, registration no. 2298693, registered on December 7, 1999;
LQ LA QUINTA INN & SUITES, registration no. 2300509, registered on December 14, 1999;
LA QUINTA ELINK, registration no. 2575959, registered on June 4, 2002;
LA QUINTA RETURNS, registration no. 2832831, registered on April 13, 2004;
EVERY LA QUINTA, EVERY TIME, registration no. 2855754, registered on June 22, 2004;
LQ LA QUINTA INN & SUITES, registration no. 3064031, registered February 28, 2006.
The Complainant has trademarked its name in 50 countries internationally, including Indonesia.
The Complaint also holds a large number of domain names that incorporate the words “laquinta”, “laquintainn”, or these in combination with words or place names related to travel, accommodation or related services.
Nothing is known about the Respondent except for the information lodged with the registration of the disputed domain name on March 21, 2011. 5. Parties’ Contentions A. Complainant
The Complainant has produced copies of registration documents for its trademarks registered at the USPTO, and a detailed list of its other trademarks registered internationally.
The Complainant contends that the disputed domain name incorporates the trademarks LA QUINTA and LA QUINTA INN in which the Complainant has rights, and is confusingly similar to those trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s registration of the disputed domain name was made 42 years after the Complainant registered the trademark LA QUINTA, 16 years after the Complainant registered its domain name, and 11 years after the Complainant registered its domain name.
The Respondent is not commonly known by or affiliated with the disputed domain name, has made no legitimate use of it, and cannot do so. The Respondent has no obvious connection with the disputed domain name and has not used and could not use it in legitimate business or for a bona fide offering of goods or services. The onus is upon the Respondent to prove any such legitimacy under the Policy. Furthermore, the Respondent’s failure to use the disputed domain name, in the circumstances, may be taken to support a finding that the Respondent does not have a legitimate interest in it.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. It is submitted that the registration of a domain name confusingly similar to a famous trademark by an entity that has no relationship to that trademark is in itself sufficient evidence of bad faith registration and use.
In respect of bad faith registration, the Complainant says that with LA QUINTA INN being the Complainant’s trademark, it is clear that the disputed domain name could not have been constructed by chance and was registered to trade on the trademark of the Complainant. It is submitted that registration of a domain name identical to the Complainant’s trademark, where there was knowledge of the Complainant’s rights, is evidence of bad faith registration, and furthermore, that there is a legal presumption of bad faith when the Respondent ought reasonably to have been aware of the Complainant’s trademark, actually or constructively. The Complainant has since 1996 maintained a trademark registration for LA QUINTA in Indonesia (registration no. 372248 / IDM000077503).
The Complainant contends that the Respondent registered the disputed domain name for the purpose of garnering traffic for the Respondent’s purposes.
In respect of bad faith use, the Complainant contends that the disputed domain name was being used with intent to deceive consumers seeking to reach the Complainant’s authentic “La Quinta” websites. Instead, the confusingly similar disputed domain name has led consumers to a website that is inactive and contains no significant content. It is submitted that there is substantial precedent for a finding of bad faith to be made where there has been inactivity such as this by the holder of a disputed domain name embodying another’s trademark.
On November 11, 2011, and November 28, 2011, the Complainant attempted to contact the Respondent at the disclosed privacy-protected email address in order to request a transfer of the disputed domain name. There has not been any reply.
The Complainant has cited a substantial number of previous decisions under the UDRP that it considers should be treated by the Panel as precedent in the present case.
The Complainant requests the transfer to itself of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Panel is satisfied on the basis of the documentary evidence produced that the Complainant has valid rights in the trademarks LA QUINTA and LA QUINTA INN.
The disputed domain name is . The generic Top Level Domain (gTLD) designation, in this case “.info”, is not usually taken into account in determining confusing similarity unless it contributes to the confusion. To a person familiar with the Complainant’s trademarks, the disputed domain name reads “La Quinta Inn”, which is effectively identical to the trademark LA QUINTA INN and incorporates the trademark LA QUINTA. The disputed domain name is found by the Panel to be confusingly similar to the Complainant’s trademarks within the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has stated that it has no business connection with the Respondent and has asserted that the Respondent cannot have any rights or legitimate interests in the disputed domain name embodying the Complainant’s trademarks.
The Respondent has not availed itself of the provisions under paragraph 4(c) of the Policy to seek to establish rights or legitimate interests in the disputed domain name by demonstrating use in bona fide trade, or that the Respondent is commonly known by a similar name, or use for a fair or noncommercial purpose, or in any other way satisfactory to the Panel.
Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name by a respondent in bad faith, namely:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are, however, without limitation, and bad faith registration and use may be found otherwise.
On the evidence before the Panel, the disputed domain name has been registered to embody the name of the Complainant’s long-established business and to reproduce the well-known service and trademark LA QUINTA INN entirely. Since the date of its registration the disputed domain name appears to have remained effectively unused, and visitors to the URL receive confirmation of its non-use in the form of a message from the hosting service stating, among other things: “Welcome! This domain was recently registered at . The domain owner may currently be creating a great site for this domain. Please check back later!”
In the Panel’s interpretation, having regard to all the circumstances, the disputed domain name is passively held by the Respondent and unequivocally comprises the Complainant’s well-known trademark. The Respondent has offered no explanation and the Panel cannot conceive of any realistic use the Respondent may make of the disputed domain name without conflicting with the legitimate interests of the Complainant. Whilst the factual matrix of each case is different and previous decisions under the UDRP need not necessarily be followed as precedent, the principles widely adopted since the early definitive case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 lead the present Panel to decide, in this case, that the circumstances accompanying the Respondent’s possession and non-use of the disputed domain name are within the concept of use in bad faith.
The Panel further finds, on the balance of probabilities, that the disputed domain name was registered for the purpose for which it has been used in bad faith and was therefore registered in bad faith.
Paragraph 4(a) of the Registration Agreement between the Respondent and eNom obliged the Respondent to keep its contact details current and correct. Cease and desist letters sent by the Complainant to the available contact details of the Respondent on November 11, 2011, and November 28, 2011 were not replied to. The Panel finds the Respondent’s failure to reply to the cease and desist letters to be a compounding factor in bad faith (see Ebay, Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632). 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.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: March 23, 2012
Full & Egal Universal Law Academy