The Rittenhouse Development Company v. Domains For Sale, Inc.
Claim Number: FA0202000105211
Complainant is The Rittenhouse Development Company, Philadelphia, PA (“Complainant”) represented by Peter T. Wakiyama, of Wolf, Block, Schorr and Solis-Cohen LLP. Respondent is Domains For Sale, Inc., Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <therittenhousehotel.com>, registered with Tucows, 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 February 28, 2002; the Forum received a hard copy of the Complaint on February 28, 2002.
On February 28, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <therittenhousehotel.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 March 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 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 firstname.lastname@example.org 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 March 27, 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.
1. The disputed domain name <therittenhousehotel.com> is confusingly similar to Complainant’s federally registered THE RITTENHOUSE mark.
2. Respondent has been using a website to post messages of the group “Abortion is Murder” in connection with the disputed domain name and such use is not a bona fide offering of goods or services nor is it a legitimate noncommercial or fair use. Further, Respondent is not commonly known by the disputed domain name or affiliated with Complainant in any manner. Therefore, Respondent has no rights or legitimate interests in using Complainant’s mark as part of the disputed domain name.
3. Respondent knew or should have known about the long established THE RITTENHOUSE mark. Further, Respondent has made multiple changes to disguise the identity of the registrant of the disputed domain name. Finally, Respondent offered to sell the disputed domain name for $1,000 to Complainant. Therefore, Respondent has registered and used the disputed domain name in bad faith.
No Response was submitted.
Complainant has used THE RITTENHOUSE mark as early as June 15, 1989 in connection with hotel services in Philadelphia, PA. Complainant registered THE RITTENHOUSE mark with the United States Patent and Trademark Office on January 29, 1991, Registration No. 1,633,530. Complainant’s services are advertised throughout the United States via newspaper advertisements, trade and professional directories and via the Internet. Complainant has registered: <therittenhousehotel.com>, <therittenhousehotel.com>, <rittenhousehotel.com>, <rittenhousehotel.net>, <rittenhousehotel.biz>, <rittenhousehotel.info>, <rittenhousehotel.org>, <therittenhousehotel.net>, <therittenhousehotel.biz>, <therittenhousehotel.info>, <therittenhousehotel.org>, <therittenhouse.com>, <therittenhouse.net>, <therittenhouse.biz>, <therittenhouse.info>, and <therittenhouse.org>.
Respondent registered <therittenhousehotel.com> on December 18, 2001. Complainant contends that within a month’s period of time Respondent has listed the registrant of the disputed domain name as Domain for Sale, Inc., John Barry and MG. Complainant also contends that when Complainant contacted Respondent regarding the disputed domain name, Respondent offered to sell <therittenhousehotel.com> for $1,000 and then threatened Complainant that if they did not comply to the offer they better “watch their ass.” Respondent has connected the disputed domain name to a website “Abortion is Murder” which offers graphic images of aborted fetuses in attempt to promote an anti-abortion cause.
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 rights to its THE RITTENHOUSE mark by federal registration and subsequent continuous use. The disputed domain name <therittenhousehotel.com> is confusingly similar to Complainant’s THE RITTENHOUSE mark. The only difference between the disputed domain name and Complainant’s mark is the generic term “hotel” and such a term does not distinguish the mark from the 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 Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant ). The confusing similarity is even more apparent in this case given that the generic term “hotel” describes Complainant’s business. 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 mark “Marriott”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to file a Response in this matter. Therefore, the Panel may presume that Respondent has no rights or legitimate interests in <therittenhousehotel.com>. 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 a domain name that is confusingly similar to Complainant’s mark. Respondent has linked this domain name to a website that has no connection with Complainant’s mark and offers horrifying depictions of fetuses in attempt to promote an anti-abortion message. There is no evidence presented that Respondent is connected with an anti-abortion organization. Finally, Respondent offered to sell the disputed domain name to Complainant for consideration in excess of out-of-pocket costs. Therefore, the Panel may infer that Respondent has used the disputed domain name to tarnish Complainant’s mark and Respondent’s actual motivation is not to use the disputed domain name but to sell it to Complainant. Such actions are not considered a bona fide offering of goods and services as pursuant to Policy ¶ 4(c)(i). See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant).
There is no evidence that Respondent has been, or is currently known as <therittenhousehotel.com>. Therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Because of the confusing similarity between Complainant’s mark and the disputed domain name, the Panel may infer that Respondent has used <therittenhousehotel.com> to divert Internet users to Respondent’s website. Such use by Respondent is not a legitimate noncommercial or fair use as 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 Policy ¶ 4(a)(ii) has been satisfied.
Respondent offered to sell the disputed domain name to Complainant for $1,000 and then threatened Complaint that if Complainant did not comply with the offer, that Complainant better watch its back. This offer accompanied by Respondent’s threat is evidence that it has registered and used the disputed domain name in bad faith as pursuant to Policy ¶ 4(b)(i). See Ingram Micro Inc v. Noton Inc., D2001-0124 (WIPO Mar. 6, 2001) (finding bad faith registration and use where Respondent attempted to blackmail the Complainant into buying the disputed domain names with threats of exposure to the media and adverse publicity to the Complainant’s employees and customers). Furthermore, Respondent’s company name and its intent to conceal its actual identity on the administration and billing contacts is also evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (finding “the manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”).
Furthermore, it has been consistently held that when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images, that the party has registered and used the disputed domain name in bad faith. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of 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 be hereby granted.
Accordingly, it is Ordered that the domain name <therittenhousehotel.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: April 8, 2002
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