The
Rittenhouse Development Company v. Domains For Sale, Inc.
Claim
Number: FA0202000105211
PARTIES
Complainant is The Rittenhouse Development Company,
Philadelphia, PA (“Complainant”) represented by Peter T. Wakiyama, of Wolf,
Block, Schorr and Solis-Cohen LLP.
Respondent is Domains For Sale,
Inc., Bronx, NY (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <therittenhousehotel.com>,
registered with Tucows, Inc.
PANEL
The undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as
Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
28, 2002; the Forum received a hard copy of the Complaint on February 28, 2002.
On February 28, 2002, Tucows,
Inc. confirmed by e-mail to the Forum that the domain name <therittenhousehotel.com> is registered with Tucows, Inc. and
that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is
bound by the Tucows, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 5, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 25, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@therittenhousehotel.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On March 27, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Sandra Franklin 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.” 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.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
1. The disputed domain
name <therittenhousehotel.com>
is confusingly similar to Complainant’s federally registered THE RITTENHOUSE
mark.
2. Respondent has been
using a website to post messages of the group “Abortion is Murder” in
connection with the disputed domain name and such use is not a bona fide
offering of goods or services nor is it a legitimate noncommercial or fair use. Further, Respondent is not commonly known
by the disputed domain name or affiliated with Complainant in any manner. Therefore, Respondent has no rights or
legitimate interests in using Complainant’s mark as part of the disputed domain
name.
3. Respondent knew or
should have known about the long established THE RITTENHOUSE mark. Further, Respondent has made multiple
changes to disguise the identity of the registrant of the disputed domain name. Finally, Respondent offered to sell the
disputed domain name for $1,000 to Complainant. Therefore, Respondent has registered and used the disputed domain
name in bad faith.
B. Respondent
No Response was
submitted.
FINDINGS
Complainant
has used THE RITTENHOUSE mark as early as June 15, 1989 in connection with
hotel services in Philadelphia, PA.
Complainant registered THE RITTENHOUSE mark with the United States
Patent and Trademark Office on January 29, 1991, Registration No.
1,633,530. Complainant’s services are
advertised throughout the United States via newspaper advertisements, trade and
professional directories and via the Internet.
Complainant has registered: <therittenhousehotel.com>,
<therittenhousehotel.com>, <rittenhousehotel.com>,
<rittenhousehotel.net>, <rittenhousehotel.biz>,
<rittenhousehotel.info>, <rittenhousehotel.org>,
<therittenhousehotel.net>, <therittenhousehotel.biz>,
<therittenhousehotel.info>, <therittenhousehotel.org>,
<therittenhouse.com>, <therittenhouse.net>,
<therittenhouse.biz>, <therittenhouse.info>, and
<therittenhouse.org>.
Respondent registered <therittenhousehotel.com> on December 18, 2001. Complainant contends that within a month’s period of time
Respondent has listed the registrant of the disputed domain name as Domain for
Sale, Inc., John Barry and MG.
Complainant also contends that when Complainant contacted Respondent
regarding the disputed domain name, Respondent offered to sell <therittenhousehotel.com> for $1,000 and then threatened Complainant that if
they did not comply to the offer they better “watch their ass.” Respondent has connected the disputed domain
name to a website “Abortion is Murder” which offers graphic images
of aborted fetuses in attempt to promote an anti-abortion cause.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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.
Paragraph 4(a) of the
Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
(2) the 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.
Identical
and/or Confusingly Similar
Complainant
has established its rights to its THE RITTENHOUSE mark by federal registration
and subsequent continuous use. The
disputed domain name <therittenhousehotel.com>
is confusingly similar to Complainant’s THE RITTENHOUSE mark. The only difference between the disputed
domain name and Complainant’s mark is the generic term “hotel” and such a term
does not distinguish the mark from the disputed domain name. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the Complainant combined with a generic word or term); see also
Perot Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the
Complainant’s marks with the domain name, consumers will presume the domain
name is affiliated with the Complainant ). The confusing
similarity is even more apparent in this case given that the generic term
“hotel” describes Complainant’s business.
See Marriott Int’l v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain
name <marriott-hotel.com> is confusingly similar to Complainant’s mark
“Marriott”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Respondent
has failed to file a Response in this matter.
Therefore, the Panel may presume
that Respondent has no rights or legitimate interests in <therittenhousehotel.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Respondent
registered a domain name that is confusingly similar to Complainant’s
mark. Respondent has linked this domain
name to a website that has no connection with Complainant’s mark and offers
horrifying depictions of fetuses in attempt to promote an anti-abortion
message. There is no evidence presented
that Respondent is connected with an anti-abortion organization. Finally, Respondent offered to sell the
disputed domain name to Complainant for consideration in excess of
out-of-pocket costs. Therefore, the
Panel may infer that Respondent has used the disputed domain name to tarnish
Complainant’s mark and Respondent’s actual motivation is not to use the
disputed domain name but to sell it to Complainant. Such actions are not considered a bona fide offering of goods and
services as pursuant to Policy ¶ 4(c)(i).
See Skipton Bldg. Soc’y v.
Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name
where Respondent offered the infringing domain name for sale and the evidence
suggests that anyone approaching this domain name through the world wide web would
be "misleadingly" diverted to other sites); see also Kinko’s Inc. v. eToll, Inc., FA 94447
(Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or
legitimate interests in the domain name where it appeared that the domain name
was registered for ultimate use by the Complainant).
There
is no evidence that Respondent has been, or is currently known as <therittenhousehotel.com>. Therefore,
Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate
interests in domain names because it is not commonly known by Complainant’s
marks and Respondent has not used the domain names in connection with a bona fide
offering of goods and services or for a legitimate noncommercial or fair use).
Because
of the confusing similarity between Complainant’s mark and the disputed domain
name, the Panel may infer that Respondent has used <therittenhousehotel.com> to divert Internet users to
Respondent’s website. Such use by
Respondent is not a legitimate noncommercial or fair use as pursuant to Policy
¶ 4(c)(iii). See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000)
(finding that Respondent does not have a legitimate interest in using the
domain names <caterpillarparts.com> and <caterpillarspares.com> to
suggest a connection or relationship, which does not exist, with Complainant's
mark CATERPILLAR); see also Kosmea Pty
Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the
domain name where Respondent has an intention to divert consumers of
Complainant’s products to Respondent’s site by using Complainant’s mark).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
offered to sell the disputed domain name to Complainant for $1,000 and then
threatened Complaint that if Complainant did not comply with the offer, that
Complainant better watch its back. This
offer accompanied by Respondent’s threat is evidence that it has registered and
used the disputed domain name in bad faith as pursuant to Policy ¶
4(b)(i). See Ingram Micro Inc v. Noton Inc.,
D2001-0124 (WIPO Mar. 6, 2001) (finding bad faith registration and use where
Respondent attempted to blackmail the Complainant into buying the disputed
domain names with threats of exposure to the media and adverse publicity to the
Complainant’s employees and customers).
Furthermore, Respondent’s company name and its intent to conceal its
actual identity on the administration and billing contacts is also evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO
Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify
itself and its administrative and billing contacts both conceals its identity
and unmistakably conveys its intention, from the date of the registration, to
sell rather than make any use of the disputed domain name”).
Furthermore,
it has been consistently held that when a party registers and uses a domain
name that incorporates a well-known mark and connects the domain name with a
website that depicts offensive images, that the party has registered and used
the disputed domain name in bad faith. See
Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to
provide a link to a pornographic site is evidence of bad faith registration and
use); see also Ty, Inc. v. O.Z.
Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary
evidence, linking the domain names in question to graphic, adult-oriented
websites is evidence of bad faith).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief be hereby granted.
Accordingly,
it is Ordered that the domain name <therittenhousehotel.com>
be transferred from
Respondent to Complainant.
Sandra
Franklin, Panelist
Dated: April 8, 2002
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