WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Quinta Worldwide, L.L.C v. WhoIs Privado / Sergio Nieto Garcia
Case No. D2011-0386
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 WhoIs Privado of Logroño, La Rioja, Spain / Sergio Nieto Garcia of Logroño, La Rioja, Spain.
2. The Domain Name and Registrar
The disputed domain name <laquinta-inn-hotels.com> is registered with Arsys Internet, S.L. dba NICLINE.COM (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2011. On March 1, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2011, the Registrar transmitted by email to the Center its verification response disclosing the name of the registrant which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On March 7, 2011, the Center sent an email communication related with the language of proceeding. The Complainant filed amendments to the Complaint on March 8, 2011.
The Center verified that the Complaint together with the amendments to 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 March 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2011.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 20, 2011. 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, La Quinta Worldwide, L.L.C. a company based in the United States of America owns, operates and manages well over 700 hotels in the United States, Canada and Mexico under its trademark name LA QUINTA. The Complainant is the owner and holder of the trademark LA QUINTA which is registered in the United States as well as over fifty other countries worldwide, as evidenced by registration certificate 875,802 of August 26, 1969 and other subsequent registration certificates in the United States and in other countries abroad.
The trademark LA QUINTA is registered by the Complainant both in the United States and abroad, for hotel and motel services and where specified for the provision of facilities for meetings, conventions and exhibitions. The Complainant has in addition, since 1995, registered domain names in connection with its services such as: <laquinta.com>, <laquintafranchise.com>, <laquintafranchising.com> and <laquintainn.com>.
The Respondent according to the WhoIs database registered the disputed domain name on June 8, 2010.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant's LA QUINTA Marks as it wholly incorporates the Complainant's trademarks LA QUINTA in its entirety.
(2) The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that there is no evidence of the Respondent's use of, or preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services and that the Respondent's use of the disputed domain name in connection with a parking website is not bona fide under the Policy. The Complainant further contends that the Respondent offers no services and makes no reference to a brand of its own on the website available at the disputed domain name and is therefore not commonly known by or affiliated with the disputed domain name, that the Complainant has never authorized the Respondent's use of its LA QUINTA Marks and, finally, that the Respondent is not making a legitimate, non-commercial or fair use of the domain name.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. Upon the Complainant's contentions, the Respondent's bad faith registration of the disputed domain name is evidenced by the fact that the disputed domain name is confusingly similar to the famous LA QUINTA Marks and that the Respondent has no relationship to that mark. Furthermore, the Complainant contends that the Respondent was clearly aware of the Complainant and registered the disputed domain name for the purpose of profiting from the Complainant's name and goodwill. With regard to bad faith use, the Complainant contends that the use of a domain name in order to profit from the Complainant's services without license or permission is evidence of bad faith registration and use pursuant to the Policy.
Furthermore, the Complainant contends that the Respondent registered and used the disputed domain name to take advantage of the Complainant's name and goodwill for its own profit by establishing a site offering competing hotel reservations to the Complainant's hotels using the Complainant's trademarks and images under the guise that the Respondent's site was somehow affiliated, connected, or associated with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Spanish. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English.
Complainant has submitted a request that English should be the language of the present proceeding because: (1) the disputed domain name is in the English language as it consists of the Complainant´s “La Quinta” trademark paired with the English words “hotels” and “inn”; (2) the content of the web site at the disputed domain name is entirely in English, including hotel descriptions posted by “admin” which clearly demonstrate the website owner´s efficiency in the English language; (3) the Respondent links directly to Complainant´s US business and English website connected to the disputed domain name; (4) the website links to various hotel and travel services which compete with Complainant´s business all in English; and (5) the Registration Agreement for Arsys Internet S.L. dba Nicline.com is published in English as well as Spanish.
The Complainant cites a number of UDRP decisions in which a panel has allowed proceedings to be conducted in a language other than the language of the registration agreement if the circumstances showed that the respondent was capable of responding to the complaint's language.
Pursuant to paragraph 11 of the Rules, the Panel is granted power to determine the language of proceedings having regard to the circumstances of the case. One important consideration of this issue is the fairness to both Parties in their abilities to prepare the necessary documents and protect their own interests.
It is the Panel’s view that the Respondent is clearly competent in English which is shown by the fact that the website of the disputed domain name operates in the English language. Considering both Parties have been given a fair opportunity to present their case and there can be no unfairness to the Respondent given its competence in English, the Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English.
6.2 Substantive Elements of the Policy
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds on the facts as submitted by the Complainant and unchallenged by the Respondent that the disputed domain name <laquinta-inn-hotels.com> is confusingly similar to the widely known international trademark LA QUINTA owned exclusively by the Complainant. On a careful comparison of the trademark with the disputed domain name it is evident that the disputed domain name incorporates the Complainant's trademark entirely. The addition of the words “inn” and “hotels” separated with the sign “-” and the suffix “.com” does not sufficiently distinguish the disputed domain name from the Complainant's trademark.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademark in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the domain name or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent's registration of the domain name by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview 2.0, answer to question 2.1).
The Respondent has failed to show that it has acquired any trademark rights in respect of the domain name or that the domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove both that the domain name was registered in bad faith and that it is being used in bad faith.
The Complainant's allegations with regard to the Respondent's registration and use of the domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
In the instant case, the Panel considers that the Respondent must have had knowledge of the Complainant's rights in the LA QUINTA trademark when it registered the domain name, since the Complainant's trademark is a widely known trademark. In addition in creating the domain name Respondent added to Complainant´s trademarks the terms “inn” and “hotels” in the disputed domain name; terms that are related to the services the Complainant offers. As Complainant asserts in its Complaint, the Respondent is using the term “hotels” to indicate an affiliation with the Complainant that does not exists.
The disputed domain name was selected and used by Respondent to take advantage of the notoriety associated with the LA QUINTA mark, with the intent to attract for commercial gain Internet users by utilizing sponsored links. A visit to the disputed domain name on May 2, 2011, showed click andvertising with hyperlinks to competitors of the Complainant. The Panel concurs with the understanding of several other UDRP panels that the use of a domain name with sponsored links to other competing websites is evidence of bad faith. See Mudd, LLC v. Unasi, Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
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 <laquinta-inn-hotels.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: May 3, 2011