Ritz-Carlton Hotel Company, LLC v. Jtravel
Claim Number: FA0203000105960
Complainant is The Ritz-Carlton Hotel Company, LLC, Atlanta, GA (“Complainant”) represented by Jason J. Mazur, of Arent, Fox, Kintner, Plotkin & Kahn, PLLC. Respondent is Jtravel, IA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ritzcarltonhotels.com>, registered with Stargate Communications, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 20, 2002; the Forum received a hard copy of the Complaint on March 22, 2002.
On March 25, 2002, Stargate Communications, Inc. (“Stargate”) confirmed by e-mail to the Forum that the domain name <ritzcarltonhotels.com> is registered with Stargate and that Respondent is the current registrant of the name. Stargate has verified that Respondent is bound by the Stargate 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 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 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 email@example.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 April 19, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The disputed domain name <ritzcarltonhotels.com> is confusingly similar to RITZ and RITZ-CARLTON, registered marks in which Complainant holds rights.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant operates one of the world’s most well-known and extensive hotel, restaurant, and hospitality companies. Each year, a great number of its customers obtain products and services offered under the RITZ-CARLTON marks, and millions more are exposed to the marks through advertising and promotion.
Complainant owns several trademark and service mark registrations in RITZ and RITZ-CARLTON throughout the world, including Registration Nos. 1,535,834 and 1,094,823, registered with the United States Patent and Trademark Office on April 18, 1989 and June 27, 1977, respectively.
Respondent registered the disputed domain name on November 26, 2001 and has used the domain name to promote its travel and tour business. Respondent claimed in its e-mail to Complainant that it had applied for a trademark in India in RITZCARLTONHOTELS.COM, although it provided no proof of this claim. Respondent’s website, located at the disputed domain name, has featured copyrighted material and trademarks belonging to Complainant (used without permission).
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 trademark rights in RITZ and RITZ-CARLTON pursuant to Policy ¶ 4(a)(i) through registration with the U.S. Patent and Trademark Office and continuous subsequent use.
The disputed domain name is confusingly similar to Complainant’s RITZ-CARLTON mark as it merely omits the hyphen between the two words and adds the generic term “hotels” to the end along with a generic top-level domain (“gTLD”).
The removal or addition of a hyphen does not significantly alter a mark so as to defeat a claim of confusing similarity or identicality. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (finding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in domain names is not sufficient to differentiate them from a mark).
Further, the addition of the word “hotels” does not distinguish the domain name from the mark as the word actually describes Complainant’s business and would probably increase confusion for Internet users looking for Complainant’s website. 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 MARRIOTT mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).
Similarly, the addition of “.com” to the mark is insignificant because the gTLD is a required element in domain names. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that “.com” is part of the Internet address and does not add source identity significance).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights to and interests in the RITZ-CARLTON marks. Because Respondent has not submitted a Response in this matter, the Panel may presume it holds no such rights or interests in respect of the disputed domain name. 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 the infringing domain name in an effort to resell Complainant’s hotel services, thereby “earning” a commission from Complainant for all of the customers that intended to visit the website of Complainant. This is “classic trademark infringement, even if the ultimate result . . . is that some revenue flows to the owner of the marks.” Gorstew Ltd. v. Carribean Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding no rights or legitimate interests where Respondent, a travel agent, registered several domain names incorporating the SANDALS mark in order to make a commission by taking Internet reservations for SANDALS properties); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding Respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name <deluxeform.com> to redirect users to Complainant’s <deluxeforms.com> domain name and to receive a commission from Complainant through its affiliate program). Thus, Respondent has not made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
There is no evidence that Respondent is commonly known by “ritzcarltonhotels” or <ritzcarltonhotels.com> pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as “Jtravel.” See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Although Respondent apparently claimed, through correspondence with Complainant, that it had applied for a trademark in RITZCARLTONHOTELS.COM in India, there is no evidence in the record to support this claim. Accordingly, the Panel finds no rights or interests under Policy ¶ 4(c)(ii). See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent alleged that it intended to use the domain name <attweb.com> for a company called “At the Web” but failed to provide any evidence as to the existence of the company).
Finally, given Respondent’s commercial use of the disputed domain name and its intent to promote its website as if it were affiliated with or endorsed by Complainant, it has not made a legitimate noncommercial or fair use of the name 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 Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has registered and used a domain name that is confusingly similar to Complainant’s marks in order to sell services to Complainant’s customers. In so doing, Respondent has used, without permission, several trademarks and copyrighted images in order to create an impression among Internet users that Respondent is the Complainant or that its website is somehow sponsored or endorsed by Complainant. Such behavior typifies bad faith within the meaning of Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on its website at <fanuc.com> because customers visiting the site were confused as to the relationship between the Respondent and Complainant); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding bad faith where Respondent linked the domain names, which contained the YAHOO! mark, to several of YAHOO!’s own websites).
Further, given the worldwide prominence and notoriety of Complainant’s marks, it would seem quite difficult for Respondent to have possibly made any good faith use of the marks under these circumstances. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., supra (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <ritzcarltonhotels.com> domain name be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: April 30, 2002
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