Ritzenhoff AG v. William Bennett / 2020 N California
Claim Number: FA1108001405447
Complainant is Ritzenhoff AG (“Complainant”), represented by Janet A. Marvel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is William Bennett / 2020 N California (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ritzenhoffworld.com> and <ritzenhoff.biz>, registered with Network Solutions Inc., and <ritzenhoffcollection.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2011; the National Arbitration Forum received payment on August 31, 2011.
On August 31, 2011, Network Solutions Inc., confirmed by e-mail to the National Arbitration Forum that the <ritzenhoffworld.com> and <ritzenhoff.biz> domain names are registered with Network Solutions Inc. and that Respondent is the current registrant of the names. Network Solutions Inc. has verified that Respondent is bound by the Network Solutions Inc. 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 August 31, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ritzenhoffcollection.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 September 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2011 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@ritzenhoffworld.com, postmaster@ritzenhoff.biz, and postmaster@ritzenhoffcollection.com. Also on September 7, 2011, 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.
A timely Response was received and determined to be complete on September 26, 2011.
An additional submission from Complainant was timely received by the Forum on October 3, 2011.
An additional submission from Respondent was timely received by the Forum on October 10, 2011.
On September 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor Ariel Manoff as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a designer and manufacturer of glasses, cups, bowls, vases, ashtrays and other products identified with the trademark RITZENHOFF. Complainant alleges that it began operating under this name more than 100 years ago.
2. Complainant obtained registrations in Germany for RITZENHOFF (Registration No. 39738044) and FOR RC RITZENHOFF CRISTAL (Registration No. 39738043) in 1997.
3. Complainant obtained international registrations for these trademarks (Registration No. 692069 and 740825) in 1998 and 2000.
4. Complainant obtained a registration for RITZENHOFF in U.S. (Registration No. 2897642), in Canada (Registration No. TMA669166), a Community Trademark for RITZENHOFF (Registration No. 5112891) and for RITZENHOFF PURE (Registration No. 5626809).
5. Complainant has established common law rights in its RITZENHOFF mark due to many years of use.
6. Complainant promotes its products at its website <ritzenhoff.de> and argues that consumers searching for Ritzenhoff’s website regularly mistakenly go to these other websites instead, which are in the name of the Respondent.
7. Complainant alleges that Respondent’s <ritzenhoffcollection.com> domain name resolves to a website offering Ritzenhoff’s products and also competing products designed and manufactured by a third party (Hogri).
8. Complainant argues that <ritzenhoffworld.com> domain name does neither indicate that Respondent is a reseller of Ritzenhoff’s products nor mention Ritzenhoff AG. The homepage only states: “Welcome to Ritzenhoff World! Where the World shops for Ritzenhoff”.
9. The domain name <ritzenhoffcollection.com> redirects to <ritzenhoffworld.com>, where consumers can purchase Ritzenhoff’s products and competing HOGRI ones. At <ritzenhoff.biz> consumers can also purchase both products.
10. Complainant also argues that Respondent registered <ritzenhoff.us> domain name, which resolves to a parked website. This domain name as well as <ritzenhoff.biz> and <ritzenhoffworld.com> were registered in 2010, while <ritzenhoffcollection.com> in 2001.
11. Complainant alleges that all domain names in the name of Respondent were registered after Complainant’s had got multiple trademark registrations and in an attempt to confuse consumers and trade off of Ritzenhoff’s goodwill.
12. Respondent registered the domain names which the complainant argues are confusingly similar to its mark RITZENHOFF. The <ritzenhoff.biz> domain name consists entirely of Ritzenhoff’s trademark, with no variation, apart from a generic top-level domain (gTLD).
13. The <ritzenhoffworld.com> and <ritzenhoffcollection.com> domain names add non distinctive and descriptive terms to Complainant’s trademark.
14. Complainant argues that Respondent fails to satisfy the second element of the Oki Data test, since the site is not use to sell only the trademark goods but also competitor’s products.
15. Complainant argues that Respondent also fails to satisfy the third element of the Oki Data test, since Respondent does not accurate disclose its lack of relationship with Complainant.
16. Complainant alleges that Respondent also fails to satisfy the fourth element of the Oki Data test, since Respondent registered four different RITZENHOFF-formative domain names which deprives Complainant of its rights to reflect its own trademark.
17. Complainant alleges that Respondent is not using the domain names in connection with a bona fide offering of goods or services.
18. Complainant argues that Respondent has no known rights or legitimate interests in the <ritzenhoff.biz>, <ritzenhoffworld.com> and <ritzenhoffcollection.com> domain names, since it has not provided sufficient evidence that Respondent has been commonly known by the cited domain names. The WHOIS information corresponding to each of the domain names identifies Respondent as William Bennet / 2020 N. California.
19. According to Complainant’s arguments, Respondent is not making a legitimate noncommercial or fair use of the domain without intent for commercial gain but to misleadingly divert consumers.
20. Complainant argues that Respondent registered the domain names for the purpose of disrupting the business of a competitor and its business is founded on consumer confusion, leading them to believe that its website is the source of the RITZENHOFF products it offers, or that it is affiliated.
B. Respondent
1. Respondent alleges that Ritzenhoff Collection was created by William Bennet 10 years ago as an Internet retail shop and is the name of the website for Ritzenhoff Collection, Inc. which was incorporated in 2002.
2. Respondent argues that Ritzenhoff Collection is well known as an exclusive RITZENHOFF brand shop online.
3. Respondent asserts that Respondent is commonly known by the disputed domain names as the disputed domain name reflect the name of Respondent’s business, Ritzenhoff Collection, Inc., and the products offered by the company.
4. Respondent asserts that its business is in offering its U.S. customers the complete line of RITZENHOFF products and has been engaged in the sale and promotion of Complainant’s products for fifteen years, both in physical stores in Chicago and online via the <ritzenhoffworld.com> and <ritzenhoffcollection.com> domain names.
5. Respondent contends that the <ritzenhoffworld.com> domain name was created in late 2010 as a temporary replacement for the <ritzenhoffcollection.com> domain name while that domain name could be redeveloped and an ownership dispute resolved.
6. Respondent contends that the <ritzenhoff.biz> domain name was created in 2010 as part of a new wholesale venture in which Ritzenhoff USA Distribution Inc. partnered with Kress International Importers to become Complainant’s U.S. distributor.
7. Respondent argues, however, that in 2011 Complainant suddenly terminated its contract with Kress International, who had been the exclusive agent and representative of Complainant from 2004–2011. Respondent asserts that due to the termination of that business relationship and distribution agreement, the <ritzenhoff.biz> domain name will be ceasing operation in the next month.
8. Respondent also argues that in its ten years of operations, neither Complainant nor its agents has ever mentioned any issue or concern with Respondent’s websites or stores even though they were aware of their existence.
9. Respondent alleges that its company, Ritzenhoff Collection, has promoted Complainant’s brand in a very positive way and has become the largest retailer of Complainant’s products in the U.S.
10. Respondent asserts that it has rights and legitimate interests in the disputed domain names because it uses them to offer RITZENHOFF products virtually exclusively.
11. Respondent argues that Hogri products were added at the request of Complainant’s authorized U.S. agent.
12. Respondent alleges that resolving website at the <ritzenhoffworld.com> domain name clearly states it is a retailer of RITZENHOFF products and is not Complainant.
13. Respondent argues that Hogri products are not competing goods since Hogri manufactures stainless steel products and Complainant manufactures glass and ceramic products and that Hogri and Complainant were prior business partners whose products were frequently sold side by side at trade, and that they were only offered at the disputed domain name at the request of Complainant’s agent.
14. Respondent argues that Complainant is known by its trade name, Ritzenhoff, and the website <ritzenhoff.com>, which corresponds with that name.
15. Respondent contends that Ritzenhoff Collection is commonly and publicly known by the Ritzenhoff Collection name, which corresponds to Respondent’s <ritzenhoffcollection.com> domain name and website. Respondent asserts that Ritzenhoff World is commonly and publicly known by the Ritzenhoff World name and the corresponding <ritzenhoffworld.com> domain name and accordingly the disputed domain names are not confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
16. Respondent denies that it has registered or used any of the disputed domain names in bad faith and states that the disputed domain names were registered Ritzenhoff Collection, Inc.’s president, which operates under the names “Ritzenhoff Collection” and “Ritzenhoff World,” and the president of Ritzenhoff USA Distribution, Inc., which operates the <ritzenhoff.biz> domain name.
17. Respondent alleges that it registered the <ritzenhoffcollection.com> domain name in 2001 for the sole purpose of retailing and promoting Complainant’s products and not to confuse consumers or disrupt the business of Complainant, which prior to 2010 did not include any direct-to-consumer sales.
18. Respondent states that the resolving websites and disputed domain names only enrich Complainant rather than financially detract.
19. Respondent alleges that its good faith is shown in the presence of a statement at the <ritzenhoffworld.com> domain name indicating that Respondent is not Complainant but is only a retailer.
20. Respondent reiterates that its use of the disputed domain names does not reveal bad faith as it is making a bona fide offering of goods or services and as the goods offered are clearly related to the mark under which they are sold.
21. Respondent denies that it has tried to corner the market in all domain names containing Complainant’s RITZENHOFF mark as only a few of the available domain names containing the mark have been registered by Respondent.
C. Additional Submissions
Complainant
1. Complainant argues that when being aware of <ritzenhoffcollection.com> it had assumed it belonged to Kress International Importers LLC its exclusive US distributor.
2. Complainant alleges that it terminated its distribution agreement with Kress earlier this year.
3. Complainant argues that Respondent cannot hide behind Kress to establish any rights regarding Complainant’s trademarks, even while the agreement was in force.
4. Complainant argues that there is no relationship between Ritzenhoff and Hogri, and that this firm is a competitor since both companies offer kitchenware and other household items.
5. Complainant argues that in case Kress is a distributor of HOGRI products in the United States it is irrelevant for this proceeding.
6. Complainant argues that at the time of the filing of the complaint, Respondent’s website did not indicate that Respondent had no relationship with Ritzenhoff.
7. Complainant alleges that Respondent is not commonly known as Ritzenhoff Collection or Ritzenhoff World and that it did not submit evidence suggesting that consumers actually recognized it by these names. Complainant also argues that if Respondent adopted the business name Ritzenhoff Collection or Ritzenhoff World it was in violation of Ritzenhoff’s trademark rights and he cannot claim he is commonly known by the domain names.
8. Complainant argues that Respondent used the domain names in bad faith, especially once the Ritzenhoff terminated the Distribution Agreement.
Respondent
1. Respondent argued that Hogri products were sold for a time at Ritzenhoffworld at the request of Ritzenhoff’s US distributor.
Complainant alleges that it terminated its distribution agreement with Kress earlier this year.
2. Respondent argues that its websites are not operated by Complainant’s and that the sites are retail ones and not wholesale. Respondent alleges that it cannot be responsible for lack of communication between Ritzenhoff and their distributor.
3. Respondent argues that it would have no reason not to believe Complainant’s distributor was acting on behalf of Ritzenhoff.
4. Respondent argues that the Hogri products did not exist on either ritzenhoffcollection.com, ritzenhoffworld.com or the wholesale site <ritzenhoff.biz> when the domains were registered and the sites created
Respondent, William Bennett / 2020 N California, registered the <ritzenhoffcollection.com> domain name in 2001 and <ritzenhoffworld.com> and <ritzenhoff.biz> domain names in 2010. Respondent’s disputed domain names include Complainant’s exact trademark plus generic terms and a generic top-level domain (gTLD).
The two first domain names resolve to a website offering Complainant’s products along with other ones from a third-party (Hogri). At <ritzenhoff.biz> consumers can also purchase both products.
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.
Preliminary Issue: Multiple Respondents
Disputed Domain Names <ritzenhoffworld.com>, <ritzenhoff.biz>, and <ritzenhoffcollection.com> involved in complaint are not in the name of the same registrant and Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
However, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.
In this respect, Complainant proves that the WHOIS information identifies “William Bennett” as the registrant of the <ritzenhoffworld.com>, <ritzenhoff.biz> and <ritzenhoff.us> domain names. The registrant of the <ritzenhoffcollection.com> domain name is not “William Bennett” but “2020 N. California”.
The Panel finds that the Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity. He has proved that the same address, 2020 N. California, Ste 7-168, Chicago, IL 60647 is listed in the WHOIS information for the <ritzenhoffworld.com> and the <ritzenhoff.us> domain names. Moreover, <ritzenhoffcollection.com> disputed domain name lists part of the address (“2020 N. California”) as the name of the registrant and the rest of the address as the address itself.
In addition, Complainant proves that the telephone numbers listed for the <ritzenhoff.us> and <ritzenhoffcollection.com> domain names are the same.
Consequently, this Panel accepts to proceed with the instant proceeding.
Complainant argues that it has rights in the RITZENHOFF mark and other RITZENHOFF-formative marks in Germany, U.S. and other countries; trademark rights in Germany dating back to September 25, 1997.
This Panel finds that trademark registrations in the name of the Complainant are sufficient establish rights in the mark under Policy ¶ 4(a)(i), especially taking into account it has been firstly registered before Respondent’s domain name registration. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant argues that the Respondent’s domain names are confusingly similar to its mark RITZENHOFF since the <ritzenhoff.biz> domain name consists entirely of Ritzenhoff’s trademark, with no variation, apart from a generic top-level domain (gTLD) and the <ritzenhoffworld.com> and <ritzenhoffcollection.com> domain names add non distinctive and descriptive terms to Complainant’s trademark. This Panel finds that <ritzenhoff.biz> domain name includes Complainant’s exact trademark and adds only the generic top-level domain (“gTLD”) “.biz”. The Panel finds that the addition of gTLD cannot serve to distinguish a disputed domain name under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
As regards the <ritzenhoffworld.com> and <ritzenhoffcollection.com> domain names, this Panel finds that they also wholly include Complainant’s mark and domain name by adding only the generic words “world” and “collection,” as well as a gTLD.
This Panel holds that the addition of generic terms to Complainant’s mark is not sufficient to distinguish a 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 Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). In light of the preceding facts and case precedent, the Panel may determine that the disputed domain names are confusingly similar to its RITZENHOFF mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests the <ritzenhoff.biz>, <ritzenhoffworld.com> and <ritzenhoffcollection.com> domain names, since it has not provided sufficient evidence that Respondent has been commonly known by the cited domain names. The WHOIS information corresponding to each of the domain names identifies Respondent as William Bennet / 2020 N. California (Ritzenhoff is not present in the registrant of the domain names).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement); 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.”).
This Panel concludes that the WHOIS information for the disputed domain names identifies the domain names registrant as “William Bennett / 2020 N California,” which bears no resemblance to any of the disputed domain names.
Additionally, based on the fact that Respondent has not licensed or otherwise authorized Respondent to register the disputed domain names, the Panel holds that Respondent is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(c)(ii). See also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). See also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
This Panel finds that Respondent has not submitted evidence to prove that it is commonly known as Ritzenhoff World or by the domain name <ritzenhoff.biz>.
With respect to <ritzenhoffcollection.com>, this Panel finds that Respondent has not submitted sufficient evidence to show that consumers actually recognized it as Ritzenhoff Collection and that Respondent is commonly known by the dispute domain names prior to their registrations. Article of Incorporation regarding Ritzenhoff Collection, Inc. submitted by Respondent is dated in 2002, while the domain name was registered in 2001. Additional evidence refers to 2008 and 2010. See Disney Enterprises, Inc. v. Mark Trepanier and DisneyThemes.com, FA0707001030838 (the Panel establishes that Respondent has not presented sufficient evidence that it was commonly known by the disputed domain names prior to their registration pursuant to Policy ¶ 4(c)(ii)). See also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
This Panel concludes that Respondent registered the first domain name with the word RITZENHOFF in 2001 (after Complainant’s trademark registrations in Germany in 1997) and by that date Respondent was not commonly known as Ritzenhoff Collection (Ritzenhoff Collection, Inc. was incorporated in 2002 according to the evidence filed by Respondent).
On the other hand, Respondent is a reseller of Complainant’s products according to its website’s content. As such, Respondent (i) must actually be offering the goods or services at issue (ii) must use the resolving websites to sell only the trademarked goods, (iii) must accurately disclose its relationship with the trademark owner, and (iv) must not try to corner the market in all domain names, depriving the trademark owner of the opportunity to reflect its mark in a domain name in order for the activities of a reseller to be considered a bona fide offering of goods or services.
This Panel finds that Respondent’s use of the disputed domain names 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) because Respondent has not met the test for a reseller according to Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).
Complainant submitted evidence to prove that Respondent used the resolving websites in the past to sell not only Complainant’s goods but also HOGRI’s products. Moreover, this Panel holds that Respondent did not accurately disclose its relationship with Complainant since Respondent did not mention Complainant on the resolving websites in the past.
Thus, the Panel concludes that Respondent did not use the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because it has not satisfied the Oki Data test. See also Borla Performance Industries, Inc. v. Faster Than Them Corp., FA 977479 (Nat. Arb. Forum June 20, 2007) (determining that respondent’s use was not consistent with a bona fide offering of goods or services because the respondent also sold competing goods at the disputed domain name’s resolving website and did not accurately disclose its relationship with the complainant).
Moreover, Respondent does not have rights or legitimate interests in the domain names and does not satisfy Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
This Panel holds that Respondent’s registration and use of the disputed domain names constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Respondent used confusingly similar domain names to sell both Complainant’s products (without authorization to do so) and other (Hogri) products, is a clear disruption of Complainant’s business. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
The Panel holds that Respondent used the confusingly similar domain names in an attempt to create confusion as to Complainant’s endorsement of or affiliation with the websites housed at the disputed domain names and the Panel presumes that Respondent profits from the sale of the products featured on its website. Accordingly, the Panel concludes that Respondent is realizing a commercial gain from the confusion it has created and this type of business model constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
This Panel finds that the Complainant submitted evidence to show that Respondent did not disclaim any affiliation with Complainant and did not accurately identify its relationship with Complainant (Exhibit Q). As regards Respondent assertion that there is a disclaimer on the resolving website, which indicates that Respondent is not Complainant but is only a retailer, this Panel presumes that it was neither present all the time nor in all the websites. Moreover, other Panels hold in the past that the presence of a disclaimer on a website does not mitigate bad faith according to Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
In this case, the Panel finds that consumers could misunderstand the disclaimer taking into account the phrases “Welcome to Ritzenhoff World. Where the World Shops for Ritzenhoff” at the home page.
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ritzenhoffworld.com>, <ritzenhoff.biz>, and <ritzenhoffcollection.com> domain names be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: October 14, 2011
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