national arbitration forum

 

DECISION

 

The Ritz-Carlton Hotel Company, L.L.C. v. Online Enterprises

Claim Number: FA0711001106321

 

PARTIES

Complainant is The Ritz-Carlton Hotel Company, L.L.C. (“Complainant”), represented by Jason J. Mazur, of Arent Fox LLP, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Online Enterprises (“Respondent”), Millstone Road Box 442, Perrineville, NJ 08535.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ritzcarltonresales.com>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2007.

 

On November 5, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <ritzcarltonresales.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 November 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 3, 2007 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@ritzcarltonresales.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <ritzcarltonresales.com> domain name is confusingly similar to Complainant’s RITZ-CARLTON mark.

 

2.      Respondent does not have any rights or legitimate interests in the <ritzcarltonresales.com> domain name.

 

3.      Respondent registered and used the <ritzcarltonresales.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The Ritz-Carlton Hotel Company, L.L.C., is one of the world’s most famous hotel, hospitality, residential real estate, and real estate timesharing companies.  Complainant currently manages over 60 hotels worldwide under the RITZ-CARLTON mark.  Complainant registered the RITZ-CARLTON mark with the United States Patent and Trademark Office (“USPTO”) on June 27, 1978 (Reg. No. 1,094,823).  Complainant also registered the RITZ-CARLOTN CLUB mark on September 19, 2000 (Reg. No. 2,388,768); the RITZ-CARLTON RESIDENCES mark on January 21, 2003 (Reg. No. 2,679,096); and the RITZ-CARLTON ESTATES mark on January 21, 2003 (Reg. No. 2,679,095).

 

Respondent registered the <ritzcarltonresales.com> domain name on May 2, 2006.  The website that resolves from the disputed domain name advertises links to commercial real estate and timesharing websites that offer services in direct competition with the services provided by Complainant.  Additionally, Respondent offered to sell the disputed domain name to Complainant in July 2007.   

 

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 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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant registered the RITZ-CARLTON mark with the USPTO, and therefore, the Panel finds that Complainant has established rights to the mark under Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

The <ritzcarltonresales.com> domain name is confusingly similar to Complainant’s RITZ-CARLTON mark because it incorporates the individual terms of the mark.  The removal of the hyphen also does not distinguish the disputed domain name from Complainant’s mark.  Because the generic term “resales” describes an aspect of Complainant’s business, the addition of the generic term does not sufficiently distinguish the disputed domain name from Complainant’s mark.  Moreover, the addition of the generic top-level domain (“gTLD”) “.com” to the RITZ-CARLTON mark does not distinguish the <ritzcarltonresales.com> domain name from Complainant’s mark because all domain names are required to have a top-level domain.  Therefore, the Panel finds that the disputed domain name is confusingly similar to the RITZ-CARLTON mark under Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Space Imaging LLC v. Brownell, 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).   

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent has neither rights nor legitimate interests in the <ritzcarltonresales.com> domain name.  Complainant must present a prima facie case establishing that Respondent lacks all rights and legitimate interests in the disputed domain name.  Once Complainant has met this burden and made a prima facie case supporting the assertion that Respondent lacks all rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant has demonstrated that Respondent lacks rights and legitimate interests, and thus made a prima facie case pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Because Respondent failed to respond to the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  However, the Panel will examine all evidence in the record to determine if Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant asserts that Respondent has never been authorized to use the RITZ-CARLTON mark, and that Respondent is not and has never been commonly known by the <ritzcarltonresales.com> domain name.  In addition, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

In addition, Respondent is currently using the disputed domain name to advertise links to services that directly compete with Complainant’s services.  The Panel finds that Respondent’s use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”).

 

The Panel finds that Respondent’s offer to sell the disputed domain name to Complainant also evidences Respondent’s lacks of rights and legitimate interests in the disputed domain name.  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).   

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.   

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent has registered and used the <ritzcarltonresales.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the website that the resolves from the disputed domain name advertises links for competing real estate and timesharing services.  The disputed domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the dispute domain name.  In addition, Respondent is commercially benefiting from the likely confusion between the disputed domain name and the RITZ-CARLTON mark.  See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).

 

Moreover, the Panel finds that Respondent’s use of the disputed domain name to advertise links to competing services constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

Finally, Respondent offered to sell the <ritzcarltonresales.com> domain name to Complainant.  The Panel finds that Respondent’s offer to sell the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale; see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

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 relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ritzcarltonresales.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  December 14, 2007

 

 

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