La Quinta Worldwide, LLC v. La Quinta WorldWide
Claim Number: FA1505001621299
Complainant is La Quinta Worldwide, LLC (“Complainant”), represented by Kay Lyn Schwartz of GARDERE WYNNE SEWELL LLP, Texas, USA. Respondent is La Quinta WorldWide (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laquintaworldwide.com>, registered with NETWORK SOLUTIONS, LLC.; Network Solutions, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2015; the Forum received payment on May 26, 2015.
On May 28, 2015, NETWORK SOLUTIONS, LLC.; Network Solutions, LLC confirmed by e-mail to the Forum that the <laquintaworldwide.com> domain name is registered with NETWORK SOLUTIONS, LLC.; Network Solutions, LLC and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC.; Network Solutions, LLC has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC.; Network Solutions, LLC 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 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2015 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@laquintaworldwide.com. Also on June 5, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Policy ¶ 4(a)(i)
a. Complainant has rights in the LA QUINTA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 875,802, registered on August 26, 1969).
b. Respondent’s <laquintaworldwide.com> domain name is confusingly similar to Complainant’s LA QUINTA mark because it is differentiated by only the removal of spaces between the words of the mark and the additions of the term “worldwide” and the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name, despite the fact that the WHOIS information lists “La Quinta WorldWide” as Registrant. Respondent has not submitted any evidence to indicate being commonly known by the disputed domain name prior to registration.
b. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent’s use of the resolving website constitutes an inactive holding.
3. Policy ¶ 4(a)(iii)
a. Respondent uses the disputed domain name for the purpose of disrupting Complainant’s business.
b. Respondent uses the resolving website to capitalize on the confusion of Internet users in order to profit commercially.
c. Respondent registered the <laquintaworldwide.com> domain name with actual or constructive knowledge in Complainant’s rights in the LA QUINTA mark.
B. Respondent
1. Respondent failed to submit a formal Response.
a. The Panel sees that the <laquintaworldwide.com> domain name was created on December 8, 2014.
b. The Panel notes that in correspondence with the Forum, Respondent indicated that “Respondent hasn’t even used the site,” and “Complainant can buy it from me if they’d like.”
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.”).
Complainant uses the LA QUINTA mark in conjunction with its business as an operator of hotels worldwide. Complainant alleges it has rights in the LA QUINTA mark through its registration with the USPTO (e.g., Reg. No. 875,802, registered on August 26, 1969). Complainant has provided documentation of this registration in its Attached Exhibit B. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has rights in the LA QUINTA mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <laquintaworldwide.com> domain name is confusingly similar to Complainant’s LA QUINTA mark because it is differentiated by only the removal of spaces between the words of the mark and the additions of the term “worldwide” and the gTLD “.com.” Past panels have found that because a gTLD is required in a domain name and spaces cannot be displayed in a domain name, changes related to spaces and gTLDs are irrelevant to Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Complainant urges that the term “worldwide” is descriptive of its business operations, because it is an operator of hotels worldwide and because Complainant’s business name is La Quinta Worldwide, LLC. Past panels have found that adding words to a mark that are descriptive of the mark holder’s business operations in creating a domain name results in a domain name that is confusingly similar to the mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Therefore, the Panel finds that Respondent’s <laquintaworldwide.com> domain name is confusingly similar to Complainant’s LA QUINTA mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information lists “La Quinta WorldWide” as Registrant. See Amended Compl., at Attached Ex. F. Complainant argues that this does not show Respondent is commonly known by the domain name because it has not provided evidence of being commonly known by the domain prior to registering the domain. The Panel agrees Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Complainant also argues that the other information provided by WHOIS indicates a lack of association with Complainant and the LA QUINTA mark, including the California address and the administrative contact’s name. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Accordingly, the Panel finds that Respondent is not commonly known by the <laquintaworldwide.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the domain to provide a bona fide offering of goods or services or a legitimate and noncommercial fair use because Respondent’s use of the resolving website constitutes an inactive holding. Complainant alleges that the resolving website hosts a page containing the words “There’s nothing here.” Complainant has provided documentation of Respondent’s use in its Attached Exhibit E. Additionally, the Panel sees that in correspondence with the Forum, Respondent indicated having not actually used the disputed domain for any purpose. Past panels have found that a failure to use a disputed domain name is sufficient to show a failure to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). As the Panel finds such non-use of the domain here, the Panel finds that Respondent fails to use the <laquintaworldwide.com> domain name to provide a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant alleges that Respondent registered and uses the <laquintaworldwide.com> domain name for the purpose of disrupting Complainant’s business operations. Complainant asserts that Respondent’s choice to use the <laquintaworldwide.com> domain name shows, on its own, that Respondent uses the domain to attract traffic in a manner meant to disrupt Complainant’s business. Complainant continues to allege that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <laquintaworldwide.com> to divert Internet users seeking Complainant towards Respondent’s website. Complainant argues that the fact that Respondent chose to use <laquintaworldwide.com> as its domain name, shows, on its own, that Respondent is using it to divert Internet users for its own commercial gain.
On the other hand, the Panel recalls that Complainant also contends that Respondent’s use of the resolving website constitutes an inactive holding, which the Panel finds as true by documentation of Respondent’s use in its Attached Exhibit E that Complainant has provided. As such, the Panel is of the view that Complainant’s contention of Respondent’s use of the disputed domain name for the purpose of disrupting Complainant’s business operations is contradictory. Therefore, the Panel does not agree with Complainant’s allegation that Respondent’s choice to use the <laquintaworldwide.com> domain name shows that Respondent diverts Internet traffic for profit.
The Panel rather notes that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant’s LA QUINTA mark is world widely used and known, as evidenced by the fact of Complainant’s continuous business operations under that name since 1968 in connection with the operation of hotels worldwide at the time of Respondent’s registration, and ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith. Therefore, the Panel determines that Respondent registered and is using the disputed domain name in bad faith.
Complainant alleges that Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the LA QUINTA mark. Complainant contends that Respondent was on notice of Complainant’s rights in the LA QUINTA mark because of Complainant’s registrations with the USPTO; because Complainant’s business name being La Quinta Worldwide, LLC; and because of Complainant’s continuous business operations under that name since 1968. Past panels have found that constructive notice does not suffice to show bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). However, past panels have also found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). As the Panel infers due to the Complainant’s long established goodwill in the LA QUINTA mark that Respondent had actual knowledge of Complainant’s rights in the LA QUINTA mark at the time of registration, the Panel also finds that Respondent registered the <laquintaworldwide.com> domain in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <laquintaworldwide.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 11, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page