The Ritz-Carlton Hotel Company, L.L.C. v. Access
Claim Number: FA0705000992169
Complainant is The Ritz-Carlton Hotel Company, L.L.C. (“Complainant”), represented by Jason
J. Mazur, of Arent Fox PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ritzcarltonbali.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Tyrus R. Atkinson, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 25, 2007.
On May 24, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <ritzcarltonbali.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 May 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 19, 2006 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@ritzcarltonbali.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ritzcarltonbali.com> domain name is confusingly similar to Complainant’s RITZ-CARLTON mark.
2. Respondent does not have any rights or legitimate interests in the <ritzcarltonbali.com> domain name.
3. Respondent registered and used the <ritzcarltonbali.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, the Ritz-Carlton Hotel Company, L.L.C., is a well-known hotel, hospitality, and timesharing company that operates worldwide. Complainant has operated under the RITZ-CARLTON mark for almost 30 years and offers its various luxury hotel services online through its corresponding <ritzcarlton.com> domain name. Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the RITZ-CARLTON mark (Reg. No. 1,094,823 issued June 27, 1978).
Respondent registered the <ritzcarltonbali.com> domain name on June 18, 2001. Respondent’s domain name resolves to a commercial website that prominently features Complainant’s RITZ-CARLTON mark and promotes hotel reservation and other hotel-related services identical or closely related to those offered by Complainant. The website also displays various links to third-party websites in direct competition with Complainant. After the receipt of a cease and desist letter from Complainant, Respondent offered to sell the <ritzcarltonbali.com> domain name registration to Complainant for $1,500.
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.
Complainant’s registration of the RITZ-CARLTON mark with the USPTO sufficiently establishes its rights in 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.”).
Respondent’s <ritzcarltonbali.com> domain name is confusingly similar to Complainant’s RITZ-CARLTON mark, as it simply deletes the hyphen from the mark and adds the geographically descriptive term “bali.” These alterations of Complainant’s mark do not negate the confusing similarity between the mark and the corresponding domain name. Moreover, the addition of the generic top-level domain (“gTLD”) “.com” to the disputed domain name is irrelevant under Policy ¶ 4(a)(i), as a top-level domain is a required element of all domain names. See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he 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 . . . .").
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <ritzcarltonbali.com> domain name. However, once Complainant establishes a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant has made a prima facie case under the Policy. See 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); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises the presumption that Respondent lacks rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Nevertheless, the Panel will still examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not indicate, nor is there any other evidence in the record to suggest, that Respondent is commonly known by the <ritzcarltonbali.com> domain name. In addition, Respondent is not authorized or licensed by Complainant in any way to use the RITZ-CARLTON mark. The Panel thus finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
Respondent’s <ritzcarltonbali.com> domain name resolves to Respondent’s website that offers hotel services closely related or identical to Complainant’s services, along with links to the websites of Complainant’s direct competitors. The Panel presumes that Respondent receives click-through fees when Internet users click on the third-party links. This does not qualify as 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s website, which resolves from the <ritzcarltonbali.com> domain
name, offers hotel services identical to those of Complainant, and prominently
displays Complainant’s RITZ-CARLTON mark. Respondent presumably benefits commercially
when Internet users seeking Complainant’s services instead use Respondent’s
services. Respondent is therefore
capitalizing on the consumer recognition of Complainant’s RITZ-CARLTON mark and
the likelihood that users will confuse the <ritzcarltonbali.com>
domain name as being affiliated with Complainant. Under Policy ¶ 4(b)(iv),
this indicates that Respondent registered and is using the disputed domain name
in bad faith. See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum
Jan. 8, 2003) (finding that the disputed domain name was registered and used in
bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum
Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
In addition, Respondent’s website
at the <ritzcarltonbali.com> domain
name offers services identical to those of Complainant and uses Complainant’s
RITZ-CARLTON mark. The website also
displays links to third-party websites in direct competition with Complainant,
and the Panel infers that Respondent accrues click-through fees when Internet
users click on these links. This
constitutes a disruption of Complainant’s business and is further evidence of
bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding that the respondent registered the domain name in question
to disrupt the business of the complainant, a competitor of the respondent); see also Lambros v. Brown,
FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent
registered a domain name primarily to disrupt its competitor when it sold
similar goods as those offered by the complainant and “even included
Complainant's personal name on the website, leaving Internet users with the
assumption that it was Complainant's business they were doing business with”).
Respondent’s bad faith
registration and use of the <ritzcarltonbali.com>
domain name pursuant to Policy ¶ 4(b)(i) is
further evidenced by Respondent’s offer to sell the disputed domain name registration
to Complainant for $1,500 after Respondent received a cease and desist letter
from Complainant. See Little Six, Inc.
v. Domain For
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <ritzcarltonbali.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 28, 2007
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