WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Quinta Worldwide, L.L.C. v. Texas International Property Associates
Case No. D2010-1432
1. The parties
Complainant is La Quinta Worldwide, L.L.C. of Las Vegas, Nevada, United States of America, represented by Lydecker, Diaz, of Miami, Florida, United States of America.
Respondent is Texas International Property Associates of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lqhotels.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2010. On August 26, 2010, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On August 28, 2010, Compana 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 Respondent of the Complaint, and the proceedings commenced on September 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 24, 2010.
The Center appointed Ira S. Sacks as the sole panelist in this matter on October 4, 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
Complainant in this administrative proceeding is a limited liability company, headquartered in Dallas, Texas, which has owned and operated its hotels under its trademarked La Quinta and LQ names since 1968, or for over forty-two (42) years. Complainant employs over 9,000 LQ employees, and it owns, operates, manages and franchises over 65,000 LQ hotel rooms and over 700 hotels in 42 states in the United States, Canada and Mexico.
Complainant owns several federally registered trademarks, including the following registrations registered on the U.S. Principal Register:
LQ La Quinta Inn & Suites
La Quinta Suites & Design
LQ La Quinta Inn & Suites and Design
In addition, Complainant asserts that it has registered more than forty (40) domain names in connection with its services that consist of or contain the LQ or LA QUINTA marks or variations thereof and has submitted a list of the registrations in the Complaint.
According to the concerned registrar’s Whois database, the Respondent in this administrative proceeding is Texas International Property Associates with an address in Dallas, Texas.
In the absence of any Response, there is little information available about Respondent except that it has used the disputed domain name as the address of a website that implies an affiliation with Complainant’s business and advertises hotels in direct competition with Complainant’s business.
The disputed domain name was registered on March 7, 2006.
5. Parties’ Contentions
A. Complainant’s Contentions
Complainant stresses at the outset that this is not the first time this Respondent has been brought before a panel under the Policy for infringing others’ trademarks. No less than two hundred ninety-nine (299) Domain Name Complaints have been filed with WIPO and the National Arbitration Forum (“NAF”) against this Respondent. In fact, this is not the first time this Complainant has brought this Respondent before a panel for trademark infringement. In La Quinta Worldwide, LLC v. Texas International Property Associates, WIPO Case No. D2009-1436, the domain names <laquintarewards.com> and <laquintasedona.com> were transferred by the panel to Complainant.
Identical or Confusingly Similar
Complainant submits that the domain name <lqhotels.com> (the “Domain Name”) is identical or confusingly similar to the LQ and/or LA QUINTA trademarks in which Complainant has rights.
Complainant claims certain rights to the “LQ” and “La Quinta” names based on (i) the numerous trademarks and registered domain names it possesses in connection with its hotel services; (ii) the significant amounts it spends in advertising and promoting its trademarks and domain names in order to protect and promote its brand globally; and (iii) its longstanding use and establishment of the LQ and LA QUINTA trademarks for hotel and motel services worldwide. Based on the foregoing, Complainant contends that it has developed a family of trademark rights in and to the “LQ” and “La Quinta” names for hotel and motel services. See Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333 (C.A.Fed. 2001)(“A family of marks is a group of marks having a recognizable common characteristic ... [which] arises if the purchasing public recognizes that the common characteristic is indicative of a common origin of the goods.”).
Complainant defines the phrase “confusingly similar” generally and references the Restatement of Torts, which sets forth several factors for comparison – including the overall impression created by the designations, pronunciation, translation of foreign words, and verbal translation of pictures, suggestions connotations or meanings of the designations – by which the degree of resemblance between the conflicting designations be analyzed. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:4 (4th ed.)(citing Motorola, Inc. v. Griffiths Electronics, Inc., 317 F.2d 397, 400, 137 U.S.P.Q. 551,554 (C.C.P.A. 1963)). Additionally, “[i]n the cybersquatting context, ‘confusingly similar’ must simply mean that the mark and the domain name are so similar in sight, sound or meaning that they could be confused.” Id., at § 25:78. Complainant asserts that in this case, (i) the trademark LQ and <lqhotels.com> create the same overall impression; (ii) the spelling of the key terms are identical; (iii) the pronunciation of the key terms are identical; and (iv) the sounds are identical. Thus, Complainant suggests, the disputed Domain Name and mark are so similar in sight and sound that the two are more than likely to be confused.
Complainant further submits that the Domain Name consists of a combination of Complainant’s LQ trademark in its entirety and the term “hotels” – representing the very industry in which Complainant uses its LQ and LA QUINTA marks. Previous panels appointed under the Policy that have found that the addition of a descriptive term to a trademark does nothing to dispel confusing similarity. Nintendo of America. Inc. v. Gray West International, WIPO Case No. D2000-1219 (regarding confusion as to the domain name “pokemon-games.com”); see also Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, WIPO Case No. D2000-0477 (“The addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights.”); Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark). Furthermore, Complainant points out, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000). Moreover, in this case, not only does the addition of the term “hotels” to Complainant’s trademark in the Domain Name fail to reduce its confusing similarity with the Complainant’s LQ marks, a previous panel has found that such addition only serves to exacerbate the likelihood of confusion, as it is the business in which the mark is used. La Quinta Worldwide, LLC v. Ali Aziz, WIPO Case No. D2008-1389; see also The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137; Quintessentially (UK) Limited v. Mark Schnorrenberg/Quintessentially Concierge, WIPO Case No. D2006-1643.
Complainant further suggests that Respondent’s pairing of Complainant’s trademarked name with the very industry in which Complainant does business, is meant to imply an affiliation with Complainant and to purposefully create such confusing similarity that any visitors to Respondent’s site will be unable to distinguish between Complainant’s brand and Respondent. In other words, not only has Respondent appropriated Complainant’s name, but Respondent has also infiltrated Complainant’s marketing channel in the hopes of profiting from Complainant’s established reputation. Internet users looking for Complainant could easily find themselves misdirected to Respondent’s site by mistake.
Moreover, Complainant submits, Respondent’s website linked to the Domain Name directs the user to a series of “Sponsored listings,” including links to websites offering identical hotel services as Complainant. Respondent also falsely lists Complainant as a “sponsor” of the disputed domain name and contains a link directly to Complainant’s official site. As such, Complainant asserts, Respondent has pilfered Complainant’s good name and reputation to fraudulently illicit customers to visit a website used as a place to park advertisements, likely for a fee. Complainant thus deduces that Respondent is profiting off of the name and good will of Complainant, due to the clearly intentional confusion it has created between itself and Complainant.
Thus, Complainant asserts that Respondent has registered a domain name confusingly similar in sight and sound to Complainant’s trademark and – in association with this domain name – is marketing Complainant’s and third party’s products without license or permission to do so. Complainant concludes that Respondent’s domain name was created with the intent to be identical or confusingly similar to trademarks in which Complainant has rights and has succeeded in being so: <lqhotels.com> is identical or confusingly similar to the registered LQ and LQ.COM trademarks and the entire LQ family of marks.
Rights or Legitimate Interests
Alleging that Respondent has no rights or legitimate interests in the Domain Name, Complainant states that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. As Complainant points out, registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) in the policy. Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521. In the present case, Complainant contends, Respondent intentionally registered the Domain Name to take advantage of Complainant’s trademarks and to attract users to its web site. The web site contains no original content, only a series of “Sponsored listings” to hotel and travel services that compete with Complainant, such as “www.marriott.com”, “www.hilton.com”, “www.travelocity.com” and “www.priceline.com”, and also to “La Quinta Inn & Suites” which leads directly to Complainant’s official web site, “www.lq.com”. Complainant therefore asserts that Respondent has misappropriated Complainant’s good name and reputation to fraudulently illicit customers to visit a website used as a place to park advertisements, likely for a fee, and that Respondent is profiting off of the name and good will of Complainant, due to the clearly intentional confusion it has created between itself and Complainant.
As there is no evidence of Respondent’s use, or preparations to use the disputed domain name or a corresponding domain name in connection with a bona fide offering of goods or services, Complainant insists that the Domain Name is merely a parking space for Respondent, where “Sponsored listings” direct the user to other websites, which does not establish any right or legitimate interest therein. See VeriSign Inc. v, Bin g Glu / G Design, WIPO Case No. D2007-0421; Sports Holdings, Inc. v. MB, WIPO Case No. D2006-1262. Nor does such “parking” constitute a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. Rich Products Corporation v. Cynthia Kirk, WIPO Case No. D2007-0871; Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214; Meade Instruments Corp. v. Drop One-Buy/Sell/Lease and Snapping Services c/o Nick M, FA 0502000423017 (Nat’l Arb. Forum 2005). Moreover, Respondent’s failure to use the Domain Name since registering it in March 2006, over four (4) years ago, is further evidence of lack of legitimate use. See Mediacorp Radio Singapore Pte Ltd v. HL Lim aka Hwee Lee Lim, WIPO Case No. D2004-0291.
Complainant further alleges that Respondent is not commonly known by or affiliated with the Domain Name. Respondent offers no services and makes no reference to a brand of its own on the website affiliated with the Domain Name. Complainant asserts that this, along with the website’s unauthorized direct link to Complainant’s official website, demonstrate that Respondent is illegitimately using the Domain Name to create a false sense of association, affiliation, or sponsorship with Complainant. See Scandic Hotels AB v. GATE24.COM, WIPO Case No. D2007-0811.
Complainant further alleges Respondent is not making a legitimate, non-commercial fair use of the Domain Name and intends to receive commercial gain from Complainant’s name and goodwill, claiming that Respondent's site (i) falsely suggests an affiliation with Complainant; (ii) links to Complainant’s site without permission to do so; and (iii) links to sites of Complainant’s competitors. “Domain names that are identical or confusingly similar to a complainant’s mark, which are used to market goods or services that compete with those offered under the complainant’s mark, are not being used in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).” Hancock Fabrics, Inc. v. Forum LLC, NAF Claim No. 447259; Grand Lodge Fraternal Order of Police v. Forum LLC, NAF Claim No. 493393. Furthermore, once the complainant alleges that respondent has no right or legitimate interest 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 name at issue. Kate Spade, L.L. C. v. Darmstadter Designs, WIPO Case No. D2001-1384; see Document Technologies Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Complainant asserts that Respondent has been notified of the illegitimate use of the disputed Domain Name, and no evidence supporting this illegitimate use has been presented by Respondent. Complainant insists that Respondent has registered the Domain Name with the clear intent of commercial gain off of Complainant's name and good will. As such, Complainant concludes, Respondent has made no lawful use of the Domain Name and cannot possibly use it legitimately in the future. Moreover, as stated above, Respondent’s failure to make any use of the Domain Name within the approximately four (4) years since registration is evidence of a lack of legitimate use. See Mediacorp Radio Singapore, WIPO Case No. D2004-0291. Finally, Complainant states, the fact that Respondent is a serial cybersquatter in the business of registering domain names for profit, and against whom 299 domain name complaints have been filed with WIPO and NAF, makes it patently clear that Respondent in this case has yet again registered a domain name to profit from another’s trademark, but with no intention to use it legitimately. Consequently, Complainant claims that Respondent has no right or legitimate interest in the Domain Name.
Registered and Used in Bad Faith
Alleging that the Domain Name was registered and is being used in bad faith, Complainant underscores that registration of a domain confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); 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, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith); Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. Under this standard, Complainant asserts, registration of the Domain Name clearly qualifies as evidence of bad faith registration and use, pursuant to widely accepted UDRP case doctrine first established in Telstra v. Nuclear Marshmallows Ltd., WIPO Case No. D2000-0003, and the two elements of bad faith set forth therein: bad faith registration and bad faith use of the domain name.
Bad Faith Registration
To establish bad faith registration, Complainant highlights precedent that the registration of a domain name identical to another’s trademark, despite actual knowledge of the other’s rights – or the registration of a domain name wholly incorporating another’s trademark, despite actual or constructive knowledge of the trademark owner’s rights – is evidence of bad faith registration and use pursuant to the Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum 2002)(holding that “there is a legal presumption of bad faith, when respondent reasonably should have been aware of complainant’s trademarks, actually or constructively”); LaSalle Bank Corporation v. Domain Active Pty. Ltd., NAF Claim Number: 257756; See also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002). Furthermore, it has been held that linking to a complainant’s website from the website associated with the disputed Domain Name is evidence of opportunistic bad faith, as the respondent was clearly aware of the complainant and registered the questionable domain name for the purpose of profiting from the complainant’s name and goodwill. See Calvin Klein, Inc. v. Sufir Scelomo, NAF Claim Number: 96314 (citing America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374) (finding that ICQ mark is so obviously connected with the Complainant and its products that the use of the domain names by the Respondent, who has no connection with the Complainant, suggests opportunistic bad faith); Enterprise Rent-A-Car Company v. Forum LLC, NAF Claim: 445529 (Nat. Arb. Forum May 5, 2005); see also Pfizer, Inc. v. Suger, WIPO Case No. D2002-0187.
Complainant insists that Respondent’s actions, in the case at hand, are clearly analogous to the above cases. The links on Respondent’s websites associated with the Domain Name, compounded with Respondent's use of Complainant’s LQ trademark, evidence a calculated intent to profit off of Complainant. Complainant maintains that Respondent is capitalizing off of Complainant’s goodwill: the identical nature of the disputed domain name, <lqhotels.com>, and Complainant’s official site, <lq.com>, which markets Complainant’s hotel services, results in Internet users searching for information related to Complainant and mistakenly arriving at Respondent’s website instead. Such activity falls within paragraph 4(b)(iv) of the Policy. See Associated Professional Sleep Societies v. l.c./Li Chow, WIPO Case No. D2007-0695.
Furthermore, Complainant states, the fact that Complainant’s trademarks were widely known at the time the disputed domain name was registered, Complainant had widespread, extensive use and advertisement of its LQ mark and <lq.com> domain name for numerous years – is also evidence of bad faith. See VeriSign, WIPO Case No. D2007-0421. The high profile presence and notoriety of the LQ brand – in the hotel industry, specifically – coupled with the federal trademark registrations, strongly support the conclusion that Respondent registered and used the domain name with actual knowledge of Complainant’s trademark rights and thus in bad faith, presumably with the intent to profit from Complainant’s good name and reputation. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000); Kate Spade, WIPO Case No. D2001-1384 (citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028).
Lastly, Complainant addresses Respondent’s extensive history of cyber-squatting activity – including one hundred and twelve (112) domain name complaints filed with WIPO against Respondent and one hundred eighty seven (187) domain name complaints filed with NAF against Respondent, for a total of two hundred ninety nine (299) domain name complaints – two of which were by this Complainant against this Respondent. Previous domain name disputes involving a respondent serve as evidence of a pattern of registering domain names “with intent to attract for commercial gain Internet users to ... website(s) by creating a likelihood of confusion with the complainants (sic) trademarks, as to source, sponsorship, affiliation or endorsement of its websites … is sufficient to find bad faith under the Policy[.]” Societe BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342. By way of example, Complainant cites Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560, in which the panel found the existence of a pattern of bad faith, based on just two previous related findings of misconduct. Certainly, Complainant argues, the 299 prior disputes related hereto clearly constitute a pattern, providing evidence that this Respondent has engaged in a pattern of bad faith conduct in registering domain names, including the Domain Name, which evidences bad faith. Moreover, in an action involving these two parties, the Panel declared that “a WIPO UDRP panel conclusively determined that this Respondent has ‘engaged in a pattern of conduct whereby it registers domain names that are known trade marks … in order to extract revenue from such domain names … [and, as such,] in this case, the term ‘cybersquatter’ accurately describes the Respondent.’” La Quinta Worldwide, LLC v. Texas International Property Associates, WIPO Case No. D2009-1436 (internal citations omitted).
In fact, Complainant claims that this very Respondent has admitted that it is in the business of registering domain names for profit and that prior panel decisions addressing this very Respondent have stated that if a “domainer” is in the business of registering thousands of domain names and pays “no attention whatsoever” to whether its registrations might be identical to third party marks – especially when the trademark is already publicly registered – such practice might well support a finding that Respondent has engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks, as some panels consider a higher standard of diligence on the part of domainers to be appropriate. See Legal Rights Defenders, Inc. v. Texas International Property Associates, WIPO Case No. D2009-0284; The Fragrance Foundation, Inc. v. Texas International Property Associates, WIPO Case No. D2008-0982.
Thus, Complainant summarizes, the fact that Complainant’s brand is commonly recognized, compounded with the fact that the disputed domain name diverts to a website which links to Complainant itself, conclusively establishes that Respondent was patently aware of the Complainant and its business, and sought to divert Internet users. Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281. Compounded with this conclusive evidence, Respondent is a well-known cybersquatter against whom 299 domain name complaints have been filed. As a result, Complainant concludes that it has demonstrated Respondent’s bad faith registration of the Domain Name.
Bad Faith Use
As proof of bad faith use, Complainant points to Respondent’s use of the <lqhotels.com> domain name to promote the services of LQ, without license or permission, as well as the services of LQ’s competitors – including direct competitors, such as <Marriott.com> and <Hilton.com> and indirect competitors such as <priceline.com> and <travelocity.com> – likely for Respondent’s own profit. This type of parking has consistently supported a finding of bad faith use of the domain name. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Rich Products Corporation v. Cynthia Kirk, WIPO Case No. D2007-0871.
Complainant highlights the fact that Respondent’s webpage is a “link farm” and hosts a list of sponsored links as evidence that Respondent intentionally uses the Domain Name to profit – by receiving referral fees for redirecting Internet users from its site to other websites – from Complainant’s renowned trademark by attracting Internet users, pursuant to Policy Paragraph 4(b)(iv). VeriSign, supra. Furthermore, because Internet users will mistakenly go to Respondent’s site when seeking Complainant’s site or services sold under Complainant’s LQ mark, and because Respondent will then profit from the referrals of these users, Respondent’s use of the Domain Name is in bad faith. The confusion created by the Domain Name causes potential customers of Complainant to choose other hotel services than Complainant, thereby disrupting Complainant’s business. Id.
Complainant submits that Respondent’s choice of the Domain Name suggests bad faith use just as it suggests bad faith registration above. There is no plausible reason for Respondent’s selection of the Domain Name, Complainant insists, other than as a deliberate attempt to profit from the confusion generated with Complainant’s LQ trademark. See MasterCard International Incorporated v. Unicorn Multi-Media, Inc., WIPO Case No. D2007-0688. Respondent is profiting from the Internet traffic it is diverting to websites other than Complainant’s and therefore is not making a bona fide offering of its own goods or services. In fact, Respondent offers no goods and services of its own, but is only a “link farm” connected to Complainant’s industry and name. As such, Respondent’s use of the websites is wholly in bad faith.
Complainant concludes that Respondent has usurped Complainant’s name and goodwill for its own profit, going as far as to link to Complainant’s very own website from its website associated with the Domain Name. This, Complainant insists, is conclusive evidence that Respondent is aware of Complainant’s mark and has knowingly infringed it. Essentially, Complainant asserts, Respondent has created a website using Complainant’s trademarked “LQ” name and containing links to websites offering identical services of Complainant for the purpose of profiting from Complainant’s established reputation and good will. The facts and legal authority cited in the Complaint support Complainant’s contention that (1) Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark; (2) Respondent has no rights or legitimate interest in respect of the Domain Name; and (3) the Domain Name was registered and is being used in bad faith.
B. Respondent’s Contentions
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established that it has substantial rights in the LQ and LA QUINTA trademarks.
The Domain Name, <lqhotels.com>, is comprised of a combination of the LQ mark and the term “hotels” – the industry in which Complainant conducts business. In the view of this Panel, the Domain Name is confusingly similar to the LQ trademark in which Complainant has rights.
In reaching this conclusion this Panel is satisfied that Complainant’s trademark is the dominant element of the Domain Name. This Panel further accepts Complainant’s submission that the combination of its trademark with the term “hotels,” reflecting the very business in which Complainant is involved, would serve to add to such confusion rather than distinguish the mark and the Domain Name.
Complainant has therefore established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant submits that Respondent has no rights or legitimate interests in the Domain Name. Complainant has argued that Respondent could not have any such rights given Complainant’s rights in the LQ and LA QUINTA marks and the extent of its widespread reputation.
Complainant has provided evidence of a substantial reputation in the use of the LQ and LA QUINTA marks that stretches across the continent.
Complainant has demonstrated that Respondent offers no goods or services of its own within the hotel industry. In fact, Respondent offers no goods and services of its own at all, but provides only a “link farm.”
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It has been accepted by most panelists that in such circumstances under the Policy, the responsibility of coming forward with rebuttal evidence thus shifts to the Respondent to demonstrate that it has such rights.
Respondent’s predatory use of the Domain Name as the address of a website that advertises hotel services competing with Complainant’s business does not constitute a bona fide use of the Domain Name.
Respondent has failed to file any Response or to deliver any communication in this proceeding. In such circumstances, the Panel finds that Complainant is entitled to succeed on the second element of paragraph 4(a) of the Policy also.
C. Registered and Used in Bad Faith
Given Complainant’s substantial reputation, as well as the previous actions involving these very parties, it is improbable that Respondent was unaware of Complainant’s marks when it registered the Domain Name. Also, Complainant’s use of the LQ mark significantly predates Respondent’s registration of the Domain Name. Finally, the plethora of actions brought against Respondent for similar predatory registrations further increases the implausibility that Respondent registered and used the Domain Name with anything other than bad faith.
In the view of this Panel, the fact that the Respondent chose the distinctive combination of the words “LQ” and “hotels” – the very industry in which Complainant conducts business -- indicates that Respondent was actually aware of Complainant’s rights and reputation in the use of the LQ and LA QUINTA marks when he registered the Domain Name.
On the balance of probabilities, the Panel finds that Respondent chose this particular Domain Name because the combination of these elements was more likely to divert Internet users searching for Complainant’s enterprise to Respondent’s website.
This Panel is satisfied that Respondent chose and registered this particular Internet Domain Name in order to take predatory advantage of Complainant’s rights and reputation.
Respondent established a website at the Domain Name address that advertised hotels that operate directly in competition with Complainant’s business.
This Panel is therefore satisfied that, on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with Complainant’s LQ and LA QUINTA trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
In such circumstances, this Panel is satisfied that, on the balance of probabilities, Respondent registered and is using the Domain Name in bad faith.
Complainant has therefore also established the third element of paragraph 4(a) of the Policy and is entitled to succeed in its application.
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 <lqhotels.com> be transferred to Complainant.
Ira S. Sacks
Dated: October 12, 2010