WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Quinta Worldwide, L.L.C. v. Andi Perdana, Andirich
Case No. D2011-1279
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 Andi Perdana, Andirich of Medan, Sumatra Utara, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <la-quinta-motel.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2011. On July 27, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 28, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 29, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 29, 2011.
The Center verified that the Complaint together with the amendment 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 August 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2011.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on August 31, 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.
Regarding the language of the proceeding, the Center ascertained from the concerned Registrar, eNom, that the language of the Registration Agreement is English. Accordingly, the Panel determines that pursuant to paragraph 11(a) of the Rules the language of the proceeding is English, i.e., the language of the registration agreement.
4. Factual Background
The Complainant is a limited liability company incorporated in the U.S.A. which since 1968 has owned and operated hotels under its trademarked “La Quinta” name. The Complainant owns, operates, manages and franchises over 700 hotels in 42 states of the United States, and in Canada and Mexico. The Complainant has substantially invested in the promotion and protection of the LA QUINTA brand of hotels and motels worldwide and its brand is now very well-known in many countries. The Complainant is the holder of the U.S. trademark registration number 0875802, LA QUINTA, registered on August 26, 1969 (the “LA QUINTA Trademark”), and of many other trademark registrations for LA QUINTA in the U.S.A. and in over fifty other countries (including Indonesia).
In addition, the Complainant registered the <laquinta.com> domain name and numerous other domain names, including <laquintamotel.com>, which are used in connection with its marketing and sales activities.
The disputed domain name was created on March 21, 2011.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name <la-quinta-motel.com> reproduces the LA QUINTA Trademark and is confusingly similar to the LA QUINTA Trademark insofar as the disputed domain name contains that trademark in its entirety.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not commonly known as “La Quinta”, and has not used, or made any demonstrable preparations to use, the disputed domain name or corresponding name in connection with a bona fide offering of goods or services.
(iii) Although the disputed domain name <la-quinta-motel.com> resolves to an inactive website, its very existence diverts potential Internet users from the Complainant’s website and is tarnishing the LA QUINTA Trademark.
(iv) By registering the disputed domain name, the Respondent intentionally attempts to suggest an affiliation with the Complainant and purposefully creates a likelihood of confusion with the LA QUINTA Trademark in the hope of profiting from the Complainant’s established reputation, and by holding it passively, the Respondent’s conduct amounts to bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the basis of the Complaint.
Paragraph 10(a) of the Rules gives the Panel broad discretion to conduct the proceedings and the Panel must ensure that the proceedings take place “with due expedition”.
Accordingly, in the interest of fairness and of deciding the case on the basis of the most complete available record, the Panel has undertaken some limited factual research into matters of public record insofar as it felt it needed the results of such research to reach its decision.
The Panel thus ascertained from the Center’s publicly available database of decided cases that the Complainant was a named complainant in a number of cases, including four already in 2011, which confirm that the LA QUINTA Trademark is well-known and indicates that it inspires many cybersquatters.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the same Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2 Requirements of Paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the LA QUINTA Trademark to the disputed domain name, it is evident that the latter, <la-quinta-motel.com>, wholly incorporates the LA QUINTA Trademark, followed by the generic term “.com”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
The Panel also notes the presence of the term “motel” in the disputed domain name but finds not only that it does not reduce its confusing similarity with the Complainant’s LA QUINTA Trademark but even exacerbates the confusion, consistent with the panel’s findings in La Quinta Worldwide L.L.C. v. Qin Yue, WIPO Case No. D2010-0105:
“The use of the word ‘motel’ immediately after ‘La Quinta’, a very well known trademark, far from distinguishes the Domain Name from the trademark but rather increases the scope for confusion for obvious reasons.” and “there is clearly a possibility if not likelihood that Internet users may be confused into thinking that the owner of the Domain Name is also the owner of the trademarks to which it is similar, or at least that there is some form of association between the Respondent and the Complainant.”
The Panel finds that the disputed domain name is confusingly similar to the LA QUINTA Trademark, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing (as the Panel believes it has made in this case). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or a corresponding name or uses a corresponding name in a business. The website associated with the disputed domain name is inactive, and no information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no legitimate interests in the disputed domain name, insofar as the LA QUINTA Trademark was registered several decades before the disputed domain name; (ii) has never made a fair use of the disputed domain name, in relation with a bona fide offering of goods and services, and has not made demonstrable preparations of such use; and (iii) has no obvious connection with the disputed domain name.
In the circumstances, the Panel is satisfied that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering a domain name similar to the Complainant’s LA QUINTA Trademark.
It is well known that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and the Domain Name RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163; Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
Furthermore, the uncontradicted assertion that the Complainant’s LA QUINTA Trademark is widely known is also evidence of bad faith in registering a domain name confusingly similar to it. See VeriSign Inc. v. Bin g Glu / G Design, WIPO Case No. D2007-0421. The Panel accepts the Complainant’s submission that at the time the disputed domain name was registered, the Complainant had widespread, extensive use and advertisement of its LA QUINTA Trademark and <laquinta.com> domain name for numerous years. The notoriety of the La Quinta brand, coupled with its trademark registration in Indonesia, where the Respondent is located, support the view that the Respondent knew or must have known the Complainant’s trademark rights at the time of the registration of the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. vs. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
In addition, the coupling by the Respondent of the Complainant’s LA QUINTA Trademark with the word “motel” in the disputed domain name is strongly indicative that the Respondent must have had knowledge of the Complainant’s trademark rights for hotel and motel services.
A passive holding of a domain name may be evidence not only of bad faith registration, but also of bad faith use. See DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
The Panel notes that the Respondent’s web site, even inactive, may divert Internet users from the active website associated with the Complainant’s <laquintamotel.com> or <laquintamotel.com> domain names, which they would seek to access.
The Panel concludes in these circumstances that the Respondent’s registration, use and present passive holding of the disputed domain name indicate bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <la-quinta-motel.com> be transferred to the Complainant.
Dated: September 12, 2011