The Ritz-Carlton Hotel Company, L.L.C. v. Registration Private / Domains By
Proxy, LLC
Claim Number: FA1711001760248
Complainant is The Ritz-Carlton Hotel Company, L.L.C. (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is Registration Private / Domains By Proxy, LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ritzcarltonyachtcollection.com>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 28, 2017; the Forum received payment on November 28, 2017.
On November 30, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ritzcarltonyachtcollection.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2017 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@ritzcarltonyachtcollection.com. Also on December 1, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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" 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 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, The Ritz-Carlton Hotel Company, L.L.C., is a globally renowned luxury hotel and resort company. Complainant uses its RITZ-CARLTON mark for a wide range of services and products, including hotel and resort services, hotel management services, cruise services, real estate management services, restaurant services, spa services, and clothing. Complainant established rights in the RITZ-CARLTON mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,094,823, registered June 27, 1978). On June 22, 2017, Complainant announced its plans to offer luxury yacht experiences to be offered under the name THE RITZ-CARLTON YACHT COLLECTION, which garnered immediate media attention and was widely publicized in print and online publications. Respondent’s <ritzcarltonyachtcollection.com> domain name is confusingly similar to Complainant’s mark because it adds the terms “yacht” and “collection” and the generic top-level domain (“gTLD”) “.com” to Complainant’s fully incorporated RITZ-CARLTON mark. The domain name also almost entirely incorporates Complainant’s new THE RITZ-CARLTON YACHT COLLECTION MARK.
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as Respondent’s identity is concealed by a privacy service and no other information would indicate Respondent is commonly known by the domain name. Complainant also has not licensed or otherwise authorized Respondent to use its mark in any fashion. Respondent is not using <ritzcarltonyachtcollection.com> in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent has made no demonstrable preparations to use the domain name, as it has always resolved to a website featuring the message “website coming soon! Please check back soon to see if the site is available.”
Respondent registered and is using the <ritzcarltonyachtcollection.com> domain name in bad faith. Respondent uses the domain name for commercial gain and to benefit from the goodwill and reputation associated with Complainant’s RITZ-CARLTON mark, creating a likelihood of confusion with Complainant’s mark. Further, Respondent opportunistically registered the disputed domain name following Complainant’s press release announcing Complainant’s new business venture, THE RITZ-CARLTON YACHT COLLECTION, on June 22, 2017. Additionally, Respondent fails to make an active use of the <ritzcarltonyachtcollection.com> domain name. Moreover, Respondent clearly had actual knowledge of Complainant’s rights in the RITZ-CARLTON MARK at the time of registration given the tremendous fame of the RITZ-CARLTON Marks for years. Finally, Respondent concealed its identity using privacy service, furthering Respondent’s bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The Ritz-Carlton Hotel Company, L.L.C. (“Complainant”), of Bethesda, MD, USA. Complainant is the owner of domestic and international registrations for the mark RITZ-CARLTON, and numerous related variations of the same, which constitute the family of composite marks incorporating RITZ-CARLTON. Complainant has continuously used its mark, and variations thereof, since at least as early as 1978, in connection with its provision of a wide range of services and products in, or related to, the luxury hotel and resort business, including but not limited to, cruise services, travel services, catering, events, and management.
Respondent is Registration Private / Domains By Proxy, LLC, of Scottsdale, AZ USA. Respondent’s registrar’s address is listed as the same. The Panel notes that Respondent registered the disputed domain name on or about June 22, 2017.
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(f), 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 (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.”).
Complainant has established rights in the RITZ-CARLTON mark through registration with the USPTO (e.g., Reg. No. 1,094,823, registered June 27, 1978). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has established rights in the RITZ-CARLTON mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <ritzcarltonyachtcollection.com> domain name is confusingly similar to Complainant’s mark as it adds the terms “yacht” and “collection” and the gTLD “.com” to Complainant’s fully incorporated RITZ-CARLTON mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel also notes that although Complainant does not argue that the domain name eliminates the hyphen from its mark, the elimination of hyphens also do not distinguish domain names from marks for the purposes of Policy ¶ 4(a)(i). See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). The Panel here finds that the <ritzcarltonyachtcollection.com> domain name is confusingly similar to the RITZ-CARLTON mark under Policy ¶4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its RITZ-CARLTON mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name, especially where a respondent has employed a privacy service. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record for the <ritzcarltonyachtcollection.com> domain name lists “Registration Private” as the registrant. The Panel here finds that Respondent is not commonly known by the <ritzcarltonyachtcollection.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant contends that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Complainant asserts that Respondent has not made any demonstrable preparations to use the <ritzcarltonyachtcollection.com> domain name. Failing to make any demonstrable preparations to use a domain name is generally considered to not be a bona fide offering of goods or services or legitimate noncommercial or fair use. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Here, screenshots of the disputed domain name’s resolving website provided by Complainant indicate that the site displays the message “website coming soon! Please check back soon to see if the site is available.” The Panel here finds that Respondent fails to actively use the domain name, thus failing to use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) & (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith, as Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the RITZ-CARLTON mark by using Complainant’s mark in its entirety. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of a complainant can evidence bad faith registration and use under Policy ¶4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).” The Panel here finds that Respondent registered the domain name to commercially benefit from Complainant’s reputation and thus registered and is using the domain name in bad faith per Policy ¶4(b)(iv).
Further, Complainant argues that Respondent opportunistically registered the disputed domain name following Complainant’s press release announcing Complainant’s new business venture, THE RITZ-CARLTON YACHT COLLECTION. Opportunistic registration of a domain name can evince bad faith registration and use under Policy ¶4(a)(iii). See 3M Co. v. Jeong, FA 505494 (Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”). Complainant provided information from its own website announcing Complainant’s new Yacht business venture on June 22, 2017.The Panel also notes that June 22, 2017 is the registration date for the disputed domain name. The Panel here finds that Respondent opportunistically registered the domain name in bad faith.
Additionally, Complainant contends that Respondent failed to make an active use of the <ritzcarltonyachtcollection.com> domain name. Failure to actively use a domain name can evince bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). Screenshots provided by Complainant show that the disputed domain name resolves to a website containing the message “website coming soon! Please check back soon to see if the site is available.” The Panel here finds that Respondent failed to use the domain name in connection with an active website, and thus registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ritzcarltonyachtcollection.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 10, 2018
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