WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Quinta Worldwide, L.L.C. v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2011-2237
1. The Parties
Complainant is La Quinta Worldwide, L.L.C. of Las Vegas, Nevada, United States of America, represented by Lydecker Diaz and subsequently Gardere Wynne Sewell LLPi both of United States of America.
Respondent is Above.com Domain Privacy / Transure Enterprise Ltd of Beaumaris, Victoria, Australia and Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland respectively.
2. The Domain Name and Registrar
The disputed domain name <laquintasuite.com> is registered with Above.com Pty. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2011. On December 20, 2011, the Center transmitted by email to Above.com Pty. Ltd. a request for registrar verification in connection with the disputed domain name. On December 21, 2011, Above.com Pty. Ltd. 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 Complainant on December 21, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed amendments to the Complaint on December 21 and 22, 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 Respondent of the Complaint, and the proceedings commenced on December 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 13, 2012.
The Center appointed Manoel J. Pereira Dos Santos as the sole panelist in this matter on January 26, 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
According to the documentary evidence and contentions submitted, Complainant owns and operates hotels under a family of trademarks comprising the words "La Quinta" which are registered in different countries. LA QUINTA trademark and its variations are registered in the United States, and Complainant owns inter alia the United States Trademark Registration No. 875802 registered on August 26, 1969; No. 1080641 registered on December 27, 1977; No. 1823440 registered on February 22, 1994; No. 2298693 registered on December 7, 1999; and No. 2300509 issued on December 14, 1999.
According to the documentary evidence and contentions submitted, Complainant has owned and operated its hotels under its trademark LA QUINTA since 1968, and registered the domain name <laquinta.com> on June 15, 1995. Complainant also owns a number of domain name registrations for variations of the LA QUINTA mark with other words, including <laquintasuites.com>.
The disputed domain name was registered with Above.com Pty Ltd. on April 18, 2009. Complainant sent warning letters to Respondent on October 1, 2011, October 18, 2011, November 4, 2011 and November 10, 2011.
5. Parties’ Contentions
Complainant argues that the disputed domain name is virtually identical to the family of LA QUINTA marks because: (i) it adopts the LA QUINTA mark exactly and in its entirety, differing only by adding the descriptive word “suite”, which refers to the types of accommodations offered by Complainant at its hotel properties, La Quinta Inns & Suites; and (ii) the term “La Quinta” is the dominant element of the disputed domain name.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because: (i) there is no evidence of Respondent’s use, or preparations to use the disputed domain names in connection with a bona fide offering of goods or services; (ii) Respondent is not commonly known by or affiliated with the disputed domain name, but it is rather using the disputed domain name to create a false sense of association, affiliation, or sponsorship with Complainant, and Complainant has never authorized Respondent’s use of its LA QUINTA marks; (iii) Respondent is not making a legitimate, noncommercial fair use of the disputed domain name and intends to receive commercial gain from complainant’s name and goodwill; and (iv) once the Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to show by “concrete evidence” that it has rights or legitimate interests in the domain names at issue.
Finally, Complainant contends that Respondent registered the disputed domain name in bad faith because: (i) registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark, is itself, sufficient evidence of bad faith registration; (ii) Respondent was clearly aware of Complainant and registered the disputed domain name for the purpose of profiting from Complainant’s name and goodwill as opportunistic bad faith; and (iii) Respondent is engaged in the business of registering third parties’ trademarks as domain names in order the run pay-per-click websites. Complainant further contends that: (i) Respondent’s use of the disputed domain name to profit from the goodwill of the LA QUINTA trademark, as well as to promote the services of Complainant’s competitors is evidence of bad faith use pursuant to paragraph 4(a)(iii) of the Policy; (ii) the use of “sponsored listings” for websites of Complainant’s competitors and to Complainant’s official website is a type of parking page, which has consistently supported a finding of bad faith use of a domain name; and (iii) Respondent’s bad faith use is evidenced by the fact that Respondent made use of a privacy service when registering and using domain names, including the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Respondent’s standing
When the Complaint was filed, the registrant of the disputed domain name was recorded as “Above.com Domain Privacy”, which is a protection service that enables “real” owners of domain names to conceal their identities. However, in its verification response, the registrar Above.com Pty Ltd. advised that the registrant of the disputed domain name is in fact “Transure Enterprise Ltd.”
Both the protection service and the actual registrant have been served with copies of the Complaint and neither has responded. The Panel sees no reason to distinguish between the two. The practice of having more than one respondent to a proceeding under the Policy where one is a protection service and the other is the beneficial party, which was later disclosed by the registrar is well-recognized in UDRP cases, as it helps to inform interested parties. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642.
B. Effect of the Default
The consensus view amongst UDRP panels is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.2, (“WIPO Overview 2.0”)). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; and Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; and RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
C. Identical or Confusingly Similar
The disputed domain name <laquintasuite.com> incorporates the LA QUINTA mark in its entirety. In this type of combination it is clear to the Panel that the LA QUINTA mark stands out and leads the public to think that the disputed domain is somehow connected to the owner of the registered trademark.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; and Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
The addition of the descriptive term “suite” increases the likelihood of confusion because it identifies the types of accommodations offered by Complainant at its hotel properties, which are known as “La Quinta Inns & Suites”. Therefore, this descriptive word does nothing to distinguish the disputed domain name from the registered trademark.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, supra.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the LA QUINTA mark in which Complainant has rights and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The disputed domain name is not the name of Respondent or the name by which Respondent is commonly known, and the disputed domain name is not the Respondent’s trade name. The Panel finds as reasonable Complainant’s contention that Respondent has not been authorized by Complainant to register and use the disputed domain name.
The Panel concurs with the prior WIPO UDRP decisions holding that there is no bona fide offering of goods or services where the disputed domain name resolves to a website with sponsored links including to competitive third-party websites. See ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649. As decided in Gene Kelly Image Trust v. BWI Domain Manager, WIPO Case No. D2008-0342, “[t]he existence of sponsored links on the website also clearly demonstrates that the Respondent is not using the disputed domain name as a legitimate non-commercial fan site. On the contrary, it appears plain that the Respondent is using the disputed domain name to make a commercial gain.”
The Panel is convinced that the Complainants have done enough to establish a prima facie case that the Respondent lacks rights to or legitimate interests in the disputed domain name, and by defaulting the Respondent has failed to provide the Panel with any evidence of Respondent’s rights to or legitimate interests therein. In addition, none of the three nonexclusive methods for the Panelist to conclude that Respondent has rights or a legitimate interest in the disputed domain name (paragraph 4(c) of the Policy) shows a result in favor of the Respondent.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
(i) Bad Faith Registration
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainant and of its trademark LA QUINTA when Respondent registered the disputed domain name. This finding is reinforced by the fact that Respondent chose to combine the trademark “LA QUINTA” with the word “suite”, a term which describes one of the types of accommodations offered by Complainant at its hotel properties.
As a matter of fact, in the case of a domain name so obviously connected to a registered mark, its use by someone with no legitimate interest in respect of the registered domain name constitutes what has been called as “opportunistic bad faith”. See SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christian Dior. Net, WIPO Case No. D2000-0226; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Complainant also contends that the Respondent has shown a pattern of bad faith conduct by having registered other companies’ trademarks and being engaged in several UDRP proceedings as a result of such conduct. The Panel conducted an independent search on February 6, 2012, and verified that “Transure Enterprise Ltd” has been a respondent in a great number of UDRP cases where transfer of the disputed domain name was ordered. Therefore, the Panel finds that the Respondent has shown a pattern of bad faith conduct.
The Panel finds it most likely that the disputed domain name was created and registered by the Respondent in bad faith as contemplated under Paragraph of the Policy.
(ii) Bad Faith Use
The Panel is convinced by all evidence produced in this case that Respondent’s use of the disputed domain name is intended to capitalize and free-ride on the reputation of Complainant’s mark. The sponsored links existing at Respondent’s parked website make it evident that Respondent has sought to profit from the disputed domain name by diverting Internet traffic to pay-for-traffic web engines that pay compensation to Respondent. Etro S.p.A. v. Domain Registrations, WIPO Case No. D2006-0207; PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162; Nintendo of America, Inc. v. Pokemonplanet.net, et al., WIPO Case No. D2001-1020; and Nokia Corp. v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
The Panel takes the view that the content of a website (whether it is similar or different to the business of a trademark owner) is relevant in the finding of bad faith use. This is so because where a potential visitor, after typing in a confusingly similar domain name, reaches the website site offering for sale goods or services that are similar to or in direct competition with those of the original trademark owner, there is a clear evidence of diversion of Internet traffic.
Complainant also argues that Respondent’s bad faith use is evidenced by the fact that Respondent is making use of a privacy service when registering and using domain names, including the disputed domain name. While that there may be legitimate reasons why a registrant may wish to use a privacy protection service in appropriate cases, “prior panels have also noted that privacy shields may be – and often are – used for more nefarious ends, such as obstructing proceedings under the UDRP, hiding evidence of bad faith cybersquatting patterns, and allowing registrants to transfer domain names among themselves without a public record to avoid enforcement of third-party rights”. Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753 quoting Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598. Therefore, the Panel agrees that use of a privacy service may be a further evidence of bad faith.
The Panel concludes that the information provided by the Complainant, including the contents of Respondent’s website and Respondent’s pattern of conduct, indicates bad faith in the registration and use of the disputed domain name, and notes that Respondent has done nothing to supplant that indication.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <laquintasuite.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos
Dated: February 6, 2012