WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Quinta Worldwide L.L.C. v. Private Registrations Aktien Gesellschaft
Case No. D2010-1442
1. The Parties
The Complainant is La Quinta Worldwide L.L.C. of Las Vegas, Nevada, United States of America, represented by Lydecker Diaz, United States of America.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <mylaquinta.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2010. On August 27, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On August 27, 2010, Network Solutions 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 September 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2010.
The Center appointed Knud Wallberg as the sole panelist in this matter on October 13, 2010. 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 under the trademark LA QUINTA. The Complainant owns, operates, manages and franchises over 700 hotels in 42 states in the United States, Canada and Mexico.
The Complainant has registered and applied for numerous trademarks, both in the United States and in over fifty other countries, as well as having registered a wide range of domain names containing the LA QUINTA mark.
The disputed domain name <mylaquinta.com> was registered on March 10, 2009. On July 16, 2010 and again on August 9, 2010, the Complainant contacted the Respondent to request a transfer of the disputed domain name <mylaquinta.com>. Despite the Complainant’s attempts to contact the Respondent, the Complainant has received no response.
Currently, the website which correlates with the disputed domain name <mylaquinta.com> features “sponsored listings” to hotel reservation websites including “Sponsored Listings” which direct to the Complainant’ s official website, “www.lq.com” and other competing websites.
5. Parties’ Contentions
I. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name <mylaquinta.com> incorporates the Complainant’s trademark LA QUINTA in its entirety. The addition of “my” does nothing to dispel a connection with the LA QUINTA trademark; on the contrary the addition of “my” to the LA QUINTA trademark appears to suggest a special service connected to La Quinta hotels, and does nothing but exacerbate the confusion between the Complainant and the Respondent. The disputed domain name <mylaquinta.com> is thus identical or confusingly similar to the trademarks and service marks in which the Complainant has rights.
II. The Respondent has no rights or legitimate interests in respect of the domain name.
Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. In the present case, the Respondent intentionally registered the disputed domain name <mylaquinta.com> to take advantage of the Complainant’s trademarks and to attract users to its website “www.mylaquinta.com” which is merely a parking space for the Respondent, where “Sponsored Listings” direct the user to the Complainant’s website and other third party sites.
The Respondent registered the disputed domain name in March 2009, has made no legitimate use of the disputed domain name in the last year and a half since registration, and could not possibly use the disputed domain name legitimately in the future. Explicitly, the Respondent has no obvious connection with the disputed domain name and has not used the website associated with the disputed domain name for any legitimate business or enterprise or other endeavour since its registration. Rather the website connected to the disputed domain name links to the Complainant and the Complainant’s competitors.
Moreover, due to the confusing similarity between the Respondent’ s domain name and the Complainant’s trademark, Internet users looking for the Complainant may be misdirected to the Respondent’s website by mistake. The Respondent is capitalizing on this confusion by offering direct links to hotel services and the Complainant itself on the website connected to the disputed domain name <mylaquinta.com>. As such, the Respondent is clearly not using the disputed domain name in connection with a bona fide offering of goods or services, and the confusion created by the Respondent’ s name is likely divert customers looking for the Complainant’s services online.
The Respondent offers no services and makes no reference to a brand of its own on the website affiliated with the disputed domain name. Instead, the Respondent is using <mylaquinta.com> to create a false sense of association, affiliation, or sponsorship with the Complainant, and the Complainant has never authorized the Respondent’s use of its LA QUINTA trademarks. The website at issue contains direct links to the Complainant’s official site. This type of activity has been held to be illegitimate use of a domain name as it further exaggerates the false impression to Internet users that the Respondent’s use of the domain name is authorized, sponsored, or endorsed by the Complainant.
The Respondent’s site falsely suggested an affiliation with the Complainant and links to the Complainant’s site without permission to do so. Internet users who are searching for the Complainant’s official site can be easily diverted to the Respondent’s site and then directed to sites of the Complainant’s competitors offering hotel services.
III. The domain name was registered and is being used in bad faith.
The Respondent’s choice of the domain name supports both bad faith registration and bad faith use. There is no plausible reason for the Respondent’s selection of the disputed domain name other than as a deliberate attempt to profit from the confusion generated with the Complainant’s LA QUINTA trademarks and the goodwill associated hereto.
At the time the disputed domain name was registered, the Complainant had widespread, extensive use and advertisement of its LA QUINTA mark for numerous years. The high profile presence and notoriety of the LA QUINTA brand, coupled with the federal trademark registrations, support an imputation of knowledge of the Complainant’s trademark rights on the Respondent at the time of registration.
This is underlined by the actual use of the disputed domain name as described in detail above under the Section 5.A.II. The Respondent offers no goods and services of its own from the website associated with the disputed domain name, but rather the website contains and has contained from the outset a “link farm” by which the Respondent hosts a list of sponsored links to websites of the Complainant and the Complainant’s competitors. As determined by prior UDRP decisions, parking a domain name in such a manner for financial gain is common among cyber-squatting cases and may demonstrate bad faith an the part of the registrant.
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 the 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 accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s distinctive trademark LA QUINTA, with the addition of the generic term “my” as prefix and of the “.com” designation.
Since the inclusion of the gTLD denomination “.com” shall be disregarded for the purpose of these proceedings, and that the addition of a generic term such as “my” is not sufficient to avoid a finding of confusing similarity, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Respondent’s Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this by way of a formal Response or otherwise. The disputed domain name was registered several years after the Complainant first registered and started using its trademark LA QUINTA, and the Respondent is currently using the disputed domain name for a website that contains only links to websites that offer products and services that are similar to and in competition with those offered by the Complainant including a link to the Complainant’s official website “www.lq.com”. The Respondent thus could not credibly claim that the disputed domain name is intended to be used for any legitimate purpose.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy, with reference to paragraph 4(c) of the Policy, are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith.
Given the circumstances of this case, the Panel is satisfied under the specific circumstances of the present case that the Respondent is likely to have been aware of the Complainant, its LA QUINTA mark and the Complainant’s activities when registering the disputed domain name. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Further, at the time of rendering this decision the disputed domain name was used for a website which contains links to websites that offer products and services that are similar to and in competition with those offered by the Complainant including a link to the Complainant’s official website “www.lq.com”. The Panel therefore finds that the Respondent by its registration and use of the disputed domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website for commercial gain.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has proven paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mylaquinta.com> be transferred to the Complainant.
Dated: October 26, 2010