ADMINISTRATIVE PANEL DECISION
La Quinta Worldwide, LLC v. Ali Aziz
Case No. D2008-1389
1. The Parties
The Complainant is La Quinta Worldwide, LLC of Las Vegas, Nevada, United States of America, represented by Lydecker, Lee, Behar, Berga & de Zayas, LLC of the United States of America.
The Respondent is Ali Aziz of Karachi, Pakistan.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2008. On September 12, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 12, 2008, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on October 27, 2008. 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.
As the Respondent did not file any response, the Panel has checked the record to ensure that the Respondent received notice of the Complaint. The Panel is satisfied that he did. Although the courier pack containing a copy of the Complaint (with the Notice of Commencement of Administrative Proceeding) could not be delivered to the Respondent’s address provided in the Whois particulars for the Domain Name, and the email transmission to the “Postmaster” email address was unsuccessful, it appears that the email transmission to the Respondent’s email address notified by the Registrar, was successful.
4. Factual Background
The following (uncontested) statement of facts is taken from the Complaint.
The Complainant owns and operates, or provides franchise services to, a chain of “La Quinta” Hotels in the United States of America and Canada.
The Complainant is the proprietor of the word mark LA QUINTA, registered in the United States of America (with effect from March 1977), for hotel/motel services in international class 42. The registration is on the principal register maintained by the United States Patent and Trademark Office.
The Complainant has also registered or applied to register the LA QUINTA mark in over 50 countries around the world, including a number of countries in Asia. Those countries do not include Pakistan, where the Respondent appears to reside.
The Complainant has registered a number of domain names which it uses in connection with its hotel services. They include , , and . Those domain names were registered respectively on June 15, 1995, October 12, 2005, and June 6, 2003.
The Complainant says that it spends approximately USD 30 million per year in advertising and promoting its LA QUINTA trademarks and its domain name. It says that the LA QUINTA mark is associated globally with its hotel services.
The Respondent and the Domain Name
The Domain Name was registered on January 10, 2002.
The Domain Name resolves to a website at “www.usseek.com” (the “Respondent’s website”). The Complainant has produced pages from the Respondent’s website (printed on August 29, 2008), which consisted of nothing more than a number of links to third party websites (all of which appeared to be websites for hotels or for hotel booking service operations) and a search facility. The Panel notes that on one of the web pages produced by the Complainant, there was a click-on link “Make Usseek your Homepage”. The same page contained a 2002 – 2003 copyright claim by “Euroseek.com”.
At the foot of one of the August 29, 2008 pages from the Respondent’s website, there was a claim: “Official Site of La Quinta Inn and Suites”. Below that, there was a link to one of the Complainant’s websites.
Pages from the Respondent’s website which the Complainant printed on September 5, 2008, appear to be the same as the August 29,2008 pages.
The Panel visited the Respondent’s website on November 1, 2008. The Respondent’s website appeared to be in substantially the same form as it was in on August 29, 2008 and September 5, 2008. The only substantial change appeared to be that a prominent, stylized version of a “Euroseek.com” logo appeared at the top of the web page. On the “Company History” subpage of the Respondent’s website, the Panel noted that “Euroseek” describes itself as “one of the largest and fastest search portals in Europe, incorporating the latest technology to access information from 8 European countries. ... Euroseek was founded in 1996, and at that time, it was the first search engine to focus solely on Europe. ... Over the next few years, we continued to add language capacities .... Today, we offer results in a greater number of languages than any of our competitors’ offers.”
The Complainant’s representative wrote a cease and desist letter to the Respondent on August 6, 2008. The Complainant’s representative demanded the transfer of the Domain Name to the Complainant. The Complainant says that the Respondent has neither responded to nor complied with the Complainant’s request.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is identical or confusingly similar to the Complainant’s LA QUINTA service marks. The Domain Name incorporates the Complainant’s LA QUINTA mark in its entirety, and the Complainant is the proprietor of other marks which incorporate the expression “La Quinta” and together form a “family” of service marks. The Domain Name looks and sounds similar to the Complainant’s LA QUINTA marks, and it creates the same overall impression. The addition of the word “hotels” does nothing to distinguish the Domain Name from the Complainant’s LA QUINTA marks, and indeed suggests an affiliation between the Complainant and the Domain Name (“hotels” being the very industry in which the Complainant does business).
2. The Respondent has no rights or legitimate interests in respect of the Domain Name.
(i) There is no evidence of the Respondent having made any use of the Domain Name in connection with any bona fide offering of goods or services, or of the Respondent having made demonstrable preparations to do so. The Respondent’s website is simply a parking site, and parking a domain name is not sufficient to establish a right or legitimate interest in a disputed domain name (VeriSign Inc. v. Bin g Glu/G Design, WIPO Case No.D2007-0421). The Respondent himself offers no services, and makes no reference to a brand of his own.
(ii) Although the Complainant has never authorized the Respondent to use any of its LA QUINTA marks, the Respondent is using the Domain Name to create a false sense of association, affiliation, or sponsorship with the Complainant.
(iii) The Respondent is not making any legitimate non commercial or fair use of the Domain Name, and he intends to receive commercial gain from his use of the Domain Name. The Respondent has registered the Domain Name with the clear intention of deriving commercial gain off the Complainant’s name and goodwill.
3. The Domain Name was registered and is being used in bad faith. A finding of bad faith registration and use is justified having regard to the following facts:
(i) Registration of a domain name which is confusingly similar to a famous trademark by an entity that has no relationship with that mark, is itself sufficient evidence of bad faith registration and use (referring to a number of panel decisions decided under the Policy, including Veuve Clicquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co. WIPO Case No.D2000-0163 – using a name connected with a well-known product by someone with no connection with the product, suggests opportunistic bad faith).
(ii) 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 (LaSalle Bank Corporation v. Domain Active Pty. Ltd. NAF Case No. 257756). The Respondent, who links to the Complainant’s website from the Respondent’s website, was clearly aware of the Complainant, and registered the Domain Name for the purpose of profiting from the Complainant’s name and goodwill.
(iii) The similarity between the Domain Name and the Complainant’s official website results in Internet users searching for information related to the Complainant, mistakenly arriving at the Respondent’s website. Such activity falls within paragraph 4(b)(iv) of the Policy.
(iv) 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 by the Respondent at the time of registration.
(v) The Respondent has previously engaged in a pattern of cybersquatting activity. See Cingular Wireless II, LLC v. Ali Aziz, NAF Claim No. 892865; The Knot, Inc. v. Ali Aziz, WIPO Case No. D2008-0033, and The Knot, Inc. v. Ali Aziz, WIPO Case No.D2007-1006. As in those cases, the Respondent has previously registered a well-known trademark for the purpose of profiting from the goodwill and fame of that mark. (In the two WIPO Cases just referred to, the Complainant failed to show established use of their trademark prior to the Respondent’s registration. However, the Complainant relies on a dissenting opinion arguing that bad faith could be inferred, and that it was highly likely that the disputed domain name was registered to disrupt the business of the complainant, by directing consumers to competing websites for commercial gain (The Knot, In.c v. Ali Aziz, WIPO Case No.D2007-1006).)
(vi) The Respondent’s use of the Domain Name to promote the services of La Quinta, without license or permission, as well as the services of the Complainant’s competitors, likely for the Respondent’s profit, is evidence of bad faith registration and use. The Respondent’s website contains links to sites operated by competitors of the Complainant, such as Omni and Westin, and travel-related websites such as “hotels.com” and “orbitz.com”.
(vii) The fact that the Respondent’s web page is a “link farm” and hosts a list of sponsored links, demonstrates that the Respondent intentionally uses the Domain Name aiming to profit from the Complainant’s renowned mark, by attracting Internet users. The Respondent profits by receiving referral fees for redirecting Internet users from the Respondent’s website to other websites. Because Internet users will mistakenly go to the Respondent’s website when seeking the Complainant’s site or services, and because the Respondent will then profit from the referrals of these users, the Respondent’s use of the Domain Name is in bad faith.
(viii) There is no plausible reason for the Respondent’s selection of the Domain Name, other than as a deliberate attempt to profit from the confusion generated with the Complainant’s LA QUINTA mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant must prove – General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint.
The Complainant is the registered proprietor of the word mark LA QUINTA in the United States of America, and the Domain Name incorporates that mark in its entirety. Incorporating a complainant’s mark in its entirety in a disputed domain name can provide a basis for a finding that the disputed domain name is confusingly similar to the Complainant’s mark – see, for example, Nokia Group. v. Mr. Giannattasio Mario, WIPO Case No.D2002-0782. Furthermore, the addition of the word “hotels” to the Complainant’s LA QUINTA mark, only serves to exacerbate the likelihood of confusion, because the hotel industry is the very industry in which the Complainant uses its LA QUINTA mark (see in that regard The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No.D2005-1137, and Quintessentially (UK) Limited v. Mark Schnorrenberg/Quintessentially Concierge, WIPO Case No.D2006-1643).
The Panel accepts the Complainant’s submission that the Domain Name both looks and sounds like the Complainant’s LA QUINTA mark, and conveys the same general idea, or impression, as that mark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainant has not authorized the Respondent to uses its LA QUINTA mark, whether in a domain name or otherwise. There is no question of the Respondent being commonly known by the Domain Name, so paragraph 4(c)(ii) of the Policy could not apply.
That combination of circumstances sufficiently establishes a prima facie case, so that the evidentiary onus shifts to the Respondent to prove that he has some right or legitimate interest in respect of the Domain Name. The Respondent has not filed a Response, and has therefore failed to discharge that onus. The Complainant must therefore succeed on this part of its Complaint.
The Panel adds that it cannot imagine any circumstances that the Respondent might have raised, which would have justified a claim to a right or legitimate interest in respect of the Domain Name. For the reasons set out in section 6.D. of this decision, the Panel is satisfied that the Respondent registered and has been using the Domain Name in bad faith, and that finding effectively precludes any possibility that the Respondent might have been using the Domain Name in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), or making a legitimate non commercial or fair use of the Domain Name, without intent for commercial gain (paragraph 4I(iii) of the Policy).
Having regard to the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Panel is satisfied that the circumstances fall squarely within paragraph 4(b)(iv) of the Policy. The references on the Respondent’s website to the Complainant’s hotels, and the links on the Respondent’s website to the Complainant’s website, make it clear that the Respondent has been well aware of the Complainant and its hotel services in his use of the Domain Name. The Respondent, who apparently resides in Pakistan, has offered no explanation for his choice of the Domain Name, and it is hard to imagine any reason the Respondent might have put forward, other than that he wished to attract to the website to which the Domain Name would resolve, Internet users looking for the Complainant’s website. Although the extracts from the United States Patent and Trademark Office data base make it clear that the words “La Quinta” mean “country house” in Spanish, there is no obvious reason why the Respondent, who is apparently a resident of Pakistan, would have registered the Domain Name with a view to attracting Spanish language speakers who were looking for websites concerned with the topic of country houses.
In the absence of any Response, the only sensible inference the Panel can draw is that the Respondent chose the Domain Name because of its close proximity in look, sound, and conveyed impression, to the Complainant’s LA QUINTA mark.
The Respondent is not offering any goods or services of his own at the Respondent’s website. He is merely providing a landing page for sponsored links to third party websites. In the absence of any statement from the Respondent to the contrary, the Panel infers that the Respondent has been providing those links to third party sites for commercial gain, probably in the form of pay-per-click revenue earned each time a visitor to the Respondent’s websites clicks on one of the links to a sponsored third party website. In the absence of any Response, the only sensible conclusion the Panel can come to, is that the Respondent has been deliberately trading off the Complainant’s goodwill in its LA QUINTA mark, drawing to the Respondent’s website Internet users who mistakenly assume that the Respondent’s website will be a site owned or operated by the Complainant. In the language of paragraph 4(b)(iv) of the Policy, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Having regard to that conclusion, there is no need for the Panel to refer to the other (long and detailed) submissions made by the Complainant.
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 be transferred to the Complainant.
Dated: November 5, 2008