La Quinta Worldwide, LLC v. Privacy Directnic c/o Domain Name Proxy Service, Inc
Claim Number: FA1406001565657
Complainant is La Quinta Worldwide, LLC (“Complainant”), represented by Kay Lyn Schwartz of GARDERE WYNNE SEWELL LLP, Texas, USA. Respondent is Privacy Directnic c/o Domain Name Proxy Service, Inc (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laqquinta.com>, registered with DNC Holdings, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2014; the National Arbitration Forum received payment on June 20, 2014.
On June 23, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <laqquinta.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@laqquinta.com. Also on June 23, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant is a United States company that is one of the largest hotel brands in the United States.
2. Complainant is the owner of the LA QUINTA federally registered trademark (e.g. the registered service mark No. 1.080,641 registered with the United States Patent and Trademark Office ( “USPTO”) on December 27, 1977 and many other registered trademarks for LA QUINTA referred to collectively as “the LA QUINTA marks”); see Complainant’s Exhibit B.
3. The disputed domain name <laqquinta.com> is identical or confusingly similar to the LA QUINTA trademark as it merely adds the letter “q” to the trademark, which is typosquatting.
4. Respondent has no rights or legitimate interests in the disputed domain name as Respondent was not authorized to use the LA QUINTA marks in a domain name or at all, has no affiliation with Complainant or its mark and is not commonly known by the domain name.
5. Nor has Respondent used the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name.
6. The disputed domain name was registered and used in bad faith as it is a form of typosquatting, Respondent has not used it legitimately and Respondent has also been using it to misdirect internet users.
7. Respondent also knew of Complainant and its trademarks before it registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is one of the largest hotel brands in the United States.
2. Complainant is the owner of the LA QUINTA federally registered trademark (e.g. the registered service mark No.1.080,641 registered with the United States patent and Trademark Office ( “USPTO”) on December 27,1977 and many other registered trademarks for LA QUINTA referred to collectively as “ the LA QUINTA marks”); see Complainant’s Exhibit B.
3. Respondent registered the dispute domain name on September 26, 2009. On occasions, the domain name resolves to a website containing links to other sites providing hotel services and at other times it points to a website which is strikingly similar to Complainant’s main website at www.lq.com.
Paragraph 15(a) of the Rules instructs this 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it is the owner of registered service mark No.1.080,641 registered with the United States patent and Trademark Office ( “USPTO”) on December 27,1977 and many other registered trademarks for LA QUINTA referred to collectively as “the LA QUINTA marks”); see Complainant’s Exhibit B. The Panel accepts this submission and the evidence on which it is based. The Panel finds that Complainant’s USPTO registrations of the LA QUINTA marks sufficiently shows that it has rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The second issue that arises is whether the <laqquinta.com> disputed domain name is confusingly similar to the LA QUINTA mark. Complainant submits that the <laqquinta.com> domain name is confusingly similar to Complainant’s registered LA QUINTA service mark as it incorporates the mark in its entirety and merely adds the additional letter “q” which does not detract from the impression that the domain name refers to Complainant, its business and its LA QUINTA trademark. The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the mark in the disputed domain name. The Panel finds that Respondent’s addition of a gTLD to Complainant’s mark is irrelevant under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys. FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).The Panel also holds that the addition of the letter “q” does not detract from confusing similarity that is otherwise present , as it is in the present case. The Panel therefore holds that Respondent’s addition of one letter to those in Complainant’s mark does not differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Consequently, the Panel finds that Respondent’s <laqquinta.com> domain name is confusingly similar to Complainant’s LA QUINTA mark under Policy ¶ 4(a)(i). Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s LA QUINTA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations
(a) Respondent has chosen to take Complainant’s LA QUINTA mark and to use it in its domain name and added the single letter “q” which does not detract from the confusing similarity that is present;
(b) Respondent registered the disputed domain name on September 26, 2009 and did so without the permission or authority of Complainant;
(c) On occasions, the domain name resolves to a website containing links to other sites providing hotel services and at other times it points to a website which is strikingly similar to Complainant’s main website at www.lq.com;
(d) Respondent could have given an explanation for taking Complainant’s well known trademark and using it in a domain name, but has not done so, leaving the Panel in the position where it must assume that there is no legitimate reason for Respondent having registered the domain name;
(e) Complainant argues that Respondent is not commonly known by the <laqquinta.com> domain name. The Panel notes that the WHOIS record for the domain name initially identified Respondent as “Privacy DirectNic c/o Domain Name Proxy Service” which is evidence that Respondent is not known by the domain name. See Complainant’s Exhibit F. The Panel also notes that Respondent has not provided any evidence showing that it is known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <laqquinta.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names);
(f) Complainant also submits and the Panel finds that at no time before having notice of the dispute did Respondent use or make any demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. Rather, the evidence shows that on occasions, the domain name resolves to a website containing links to other sites providing hotel services which of course are competitive with Complainant and at other times it points to a website which is strikingly similar to Complainant’s main website at www.lq.com;
(g) Respondent has also engaged in diverting internet traffic for commercial purposes and this is neither a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name; see the decision cited by Complainant, Overstock.com, Inc. V.Larus H. List, WIPO Case No D2004-0215 v.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that typosquatting alone is sufficient to prove bad faith. The Panel notes that Respondent has added a single letter “q” to make the domain name which is typosquatting. The Panel finds typosquatting where, as in the present case, there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Accordingly, as the Panel finds that Respondent’s <laqquinta.com> domain name contains a common typographical error, adding a letter, the Panel also finds that Respondent has engaged in typosquatting, showing bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Secondly, Complainant argues that Respondent’s <laqquinta.com> domain name resolves to a website containing, on occasions, links to competing third-party websites and the Panel accepts the evidence submitted by Complainant to that effect. Prior UDRP panels have determined that a respondent’s use of a domain name to provide links to competing products and services such as the hotel services in the present case disrupts complainant’s business and shows bad faith under Policy ¶ 4(b)(iii). As the Panel finds that Respondent has linked its <laqquinta.com> domain name to a webpage displaying competing links on occasions and on other occasions a website very similar to that of Complainant, the Panel finds bad faith disruption of Complainant’s business, which demonstrates bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Thirdly, Complainant relies on Policy ¶ 4(b)(iv) and the Panel agrees that the facts of the case bring it squarely within that provision. Complainant argues that Respondent’s intention has clearly been to attract internet users and direct them to Respondent’s website and the Panel agrees. As the Panel finds that Respondent is using the <laqquinta.com> domain name to attract Internet users to its own website for which it presumably commercially benefits, the Panel holds that Respondent has registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Fourthly, Complainant says that Respondent was on notice as to the existence of Complainant and its LA QUINTA marks when it registered the domain name. Although constructive notice is generally thought not to be sufficient to show knowledge, the Panel concludes from all the circumstances that Respondent had actual knowledge of Complainant and its trademarks. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Accordingly, Respondent registered and subsequently used the disputed domain name in bad faith.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <laqquinta.com> domain name using the LA QUINTA mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <laqquinta.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 29, 2014
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