La Quinta Worldwide, LLC v. Domain Administrator c/o Fundacion Private Whois
Claim Number: FA1406001565672
Complainant is La Quinta Worldwide, LLC (“Complainant”), represented by Kay Lyn Schwartz of GARDERE WYNNE SEWELL LLP, Texas, USA. Respondent is Domain Administrator c/o Fundacion Private Whois (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laquinnta.com>, registered with Internet.bs Corp.
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.
Paul M. DeCicco, as Panelist.
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 26, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <laquinnta.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@laquinnta.com. Also on June 27, 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 Paul M. DeCicco 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 contends as follows:
La Quinta Worldwide, LLC, together with its affiliate companies, through licensed affiliates and their respective predecessors-in-interest and their franchisees (collectively “La Quinta”) is one of the largest hotel brands in the United States.
La Quinta is the owner of the well-known and federally protected trademark “LA QUINTA” used in connection with its owned and franchised hotels and related goods/services including food, drink, restaurant and bar services. The domain name at issue incorporates La Quinta’s entire registered mark, “LA QUINTA” and the top level domain “.COM” and adds an extra letter “N” in “LA QUINTA.”
Respondent has maliciously engaged in “typosquatting,” preying on the tendency of the average internet user to mistype a domain name by entering the letter “N” of “LA QUINTA” twice, when entering that domain name into a browser.
There exists a likelihood of confusion as a result of Respondent’s registration and use of the domain name, “LAQUINNTA.COM.” When an Internet user intends to reach La Quinta’s “LAQUINTA.COM” website, but mistakenly enters Respondent’s domain name, “LAQUINNTA.COM”, the user is brought to Respondent’s hotel-related search engine, but is expecting to be at La Quinta’s site.
Respondent does not have rights or legitimate interests in the domain name, “LAQUINNTA.COM.” Respondent has not been authorized to use the LA QUINTA Marks, and Respondent, itself, has no trade or service mark rights in “LA QUINTA” or “LAQUINNTA” or “LAQUINNTA.COM”. Respondent is not affiliated with La Quinta, has not been authorized to use La Quinta’s LA QUINTA Marks, and Respondent itself has no trade or service mark rights in “LA QUINTA” or the intentional misspelling of “LA QUINNTA” (or “LAQUINNTA.COM”). Nothing in the WHOIS domain name registration information suggests that Respondent, Domain Administrator c/o Fundacion Private Whois, is commonly known by “LA QUINTA”, “LA QUINNTA” or “LAQUINNTA.COM.” Rather, the listed Registrant in the WHOIS record for “LAQUINNTA.COM” is “Domain Administrator c/o Fundacion Private Whois”.
Respondent’s use of the domain name does not constitute a “bona fide” offering of goods or services pursuant to Policy 4(c); Respondent’s use of the domain name is clearly commercial, and with the intent to misleadingly diverts Internet consumers. Respondent’s domain name resolves to a website which provides various links to third-party sites, including third parties offering hotel services and related goods/services. Upon information and belief, Respondent is not offering any type of goods or services, but rather is running third-party advertisements and affiliate advertisements on its site. Upon information and belief, Respondent is using the domain name at issue to obtain “referral” fees in connection with an “affiliate” type of marketing program.
Respondent is misdirecting internet traffic for commercial gain (which includes deriving affiliate commissions, or as part of a “phishing” scheme) is not a bona fide offering of goods or services under the Policy, and also is not a legitimate noncommercial or fair use of a domain name under the Policy. Even if Respondent is not receiving commission fees, its use of the domain name to direct traffic to alternative sites, such as third party hotel providers referenced on Respondent’s website, is not a bona fide offering of services pursuant to the Policy.
Respondent registered and is using the domain solely for the purpose of diverting customers or potential customers of La Quinta to Respondent, or in an effort to disrupt the Complainant’s business, or to harass.
Respondent registered and is using the domain name “LAQUINNTA.COM” in bad faith. Respondent has maliciously engaged in “typosquatting” by capitalizing on the tendency of the average internet user to mistype the domain name “LAQUINTA.COM” by including an extra letter “N”.
In addition, failure to make a bona fide use of a registered domain name, that contains another’s trademark is evidence of bad faith registration and use of that domain name.
Further, intentionally trying to divert Internet users to alternative sites is evidence of bad faith. The practice of “typosquatting” is evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with another’s marks as to the source of the website, which is a violation of Policy
Respondent registered the domain name at issue solely for the purpose of luring the unwary internet user, who mistakenly mistypes the domain name, “LAQUINTA.COM”, to its website.
Respondent was on notice as to the existence of Complainant and its LA QUINTA Marks when it registered “LAQUINNTA.COM,” Actual or constructive knowledge of a commonly known mark at the time of registration is evidence of bad faith. Given the nature of the domain name at issue coupled with the content of Respondent’s site, it is evident that Respondent had actual knowledge of Complainant’s LA QUINTA trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for LA QUINTA.
Respondent is not affiliated with Complainant and had not been authorized to use the LA QUINTA mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in LA QUINTA.
The at-issue domain name is used to address a website which provides various links to third-party sites, including third parties offering hotel services and related services which compete with Complainant’s services.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has trademark rights in the LA QUINTA mark through its registration thereof with the USPTO. It is irrelevant to Policy ¶4(a)(i) analysis that Respondent may operate outside the jurisdiction of the trademark’s registrar. 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)); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <laquinnta.com> domain name contains a misspelling of Complainant’s LA QUINTA trademark less its space, and with a second “n” inserted into the second term of the mark. The top-level domain name “.com” is appended thereto to complete the domain name. The resulting differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <laquinnta.com> domain name is confusingly similar to Complainant’s LA QUINTA trademark under Policy ¶4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Domain Administrator c/o Fundacion Private Whois” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Additionally, Respondent uses this domain name to direct Internet users looking for Complainant to third party websites some of which compete with Complainant. Respondent’s use of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(i). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, it is clear that Respondent designed its <laquinnta.com> domain name to capitalize on errors made when Internet users, determined to reach Complainant via reference to Complainant’s LA QUINTA trademark, instead enter the trademark’s second term as “quinnta” either by mistyping or misspelling Complainant’s mark. Exploiting another’s trademark in this manner constitutes “typosquatting” and Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Furthermore, Respondent uses the confusingly similar domain name to mislead Internet users who are seeking Complainant to a website where Respondent may then capitalize on the inappropriately increased traffic via such website’s resident pay-per-click links. Thereby, Respondent wrongly takes advantage of the goodwill associated with Complainant’s LA QUINTA trademark. Such use of the <laquinnta.com> domain name demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Finally, it is evident from the notoriety of Complainant’s trademark and from Respondent’s overt misspelling of such mark in the at-issue domain name that Respondent was well familiar with Complainant’s trademark at the time it registered <laquinnta.com>. Respondent intentionally registered the at-issue domain name precisely for its trademark value, rather than for any other conceivable reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <laquinnta.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <laquinnta.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 24, 2014
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