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Generic Top Level Domain Name (gTLD) Decisions |
Ritz-Carlton Hotel Company, LLC v.
Jtravel
Claim Number: FA0203000105960
PARTIES
Complainant
is The Ritz-Carlton Hotel Company, LLC,
Atlanta, GA (“Complainant”) represented by Jason
J. Mazur, of Arent, Fox, Kintner,
Plotkin & Kahn, PLLC. Respondent
is Jtravel, IA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ritzcarltonhotels.com>,
registered with Stargate Communications,
Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 20, 2002; the Forum received
a hard copy of the
Complaint on March 22, 2002.
On
March 25, 2002, Stargate Communications, Inc. (“Stargate”) confirmed by e-mail
to the Forum that the domain name <ritzcarltonhotels.com>
is registered with Stargate and that Respondent is the current registrant of
the name. Stargate has verified that
Respondent is bound by the Stargate 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 25, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 15,
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 postmaster@ritzcarltonhotels.com 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
April 19, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domain name <ritzcarltonhotels.com>
is confusingly similar to RITZ and RITZ-CARLTON, registered marks in which
Complainant holds rights.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
Complainant operates one of the world’s
most well-known and extensive hotel, restaurant, and hospitality
companies. Each year, a great number of
its customers obtain products and services offered under the RITZ-CARLTON
marks, and millions more are
exposed to the marks through advertising and
promotion.
Complainant owns several trademark and
service mark registrations in RITZ and RITZ-CARLTON throughout the world,
including Registration
Nos. 1,535,834 and 1,094,823, registered with the United
States Patent and Trademark Office on April 18, 1989 and June 27, 1977,
respectively.
Respondent registered the disputed domain
name on November 26, 2001 and has used the domain name to promote its travel
and tour business. Respondent claimed
in its e-mail to Complainant that it had applied for a trademark in India in
RITZCARLTONHOTELS.COM, although it
provided no proof of this claim. Respondent’s website, located at the
disputed domain name, has featured copyrighted material and trademarks
belonging to Complainant
(used without permission).
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 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 trademark
rights in RITZ and RITZ-CARLTON pursuant to Policy ¶ 4(a)(i) through
registration with the
U.S. Patent and Trademark Office and continuous
subsequent use.
The disputed domain name is confusingly
similar to Complainant’s RITZ-CARLTON mark as it merely omits the hyphen
between the two words
and adds the generic term “hotels” to the end along with
a generic top-level domain (“gTLD”).
The removal or addition of a hyphen does
not significantly alter a mark so as to defeat a claim of confusing similarity
or identicality. See Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (finding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact
that a name is identical to a
mark"); see also Ritz-Carlton
Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding
that removing a hyphen in domain names is not sufficient to differentiate them
from a
mark).
Further, the addition of the word
“hotels” does not distinguish the domain name from the mark as the word
actually describes Complainant’s
business and would probably increase
confusion for Internet users looking for Complainant’s website. 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 MARRIOTT mark); see also Space Imaging LLC v. Brownwell, 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).
Similarly, the addition of
“.com” to the mark is insignificant because the gTLD is a required element in
domain names. See Busy
Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the 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"); see also Visit Am., Inc. v. Visit Am., FA 95093
(Nat. Arb. Forum Aug. 14, 2000) (finding that “.com” is part of the Internet
address and does not add source identity significance).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights
to and interests in the RITZ-CARLTON marks.
Because Respondent has not submitted a Response in this matter, the
Panel may presume it holds no such rights or interests in respect
of the
disputed domain name. 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 the infringing
domain name in an effort to resell Complainant’s hotel services, thereby
“earning” a commission
from Complainant for all of the customers that intended
to visit the website of Complainant.
This is “classic trademark infringement, even if the ultimate result . .
. is that some revenue flows to the owner of the marks.” Gorstew Ltd. v. Carribean Tours &
Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding no rights or
legitimate interests where Respondent, a travel agent, registered several
domain names incorporating the SANDALS mark in order to make a commission by
taking Internet reservations for SANDALS properties);
see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding
Respondent had no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) where it used the domain name
<deluxeform.com> to redirect users to Complainant’s <deluxeforms.com>
domain
name and to receive a commission from Complainant through its affiliate
program). Thus, Respondent has not made
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
There is no evidence that Respondent is
commonly known by “ritzcarltonhotels” or <ritzcarltonhotels.com>
pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as
“Jtravel.” See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known
by the mark).
Although Respondent apparently claimed, through correspondence with
Complainant, that it had applied for a trademark in RITZCARLTONHOTELS.COM
in
India, there is no evidence in the record to support this claim. Accordingly, the Panel finds no rights or
interests under Policy ¶ 4(c)(ii). See
AT&T Corp. v. Domains by Brian
Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate
interests where Respondent alleged that it intended to use the
domain name
<attweb.com> for a company called “At the Web” but failed to provide any
evidence as to the existence of the company).
Finally, given Respondent’s commercial
use of the disputed domain name and its intent to promote its website as if it
were affiliated
with or endorsed by Complainant, it has not made a legitimate
noncommercial or fair use of the name 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 Respondent has no
rights or legitimate interests in respect of the disputed domain name and,
thus, Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent has registered and used a
domain name that is confusingly similar to Complainant’s marks in order to sell
services to Complainant’s
customers. In
so doing, Respondent has used, without permission, several trademarks and
copyrighted images in order to create an impression among
Internet users that
Respondent is the Complainant or that its website is somehow sponsored
or endorsed by Complainant. Such
behavior typifies bad faith within the meaning of Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar.
13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used
Fanuc parts and robots
on its website at <fanuc.com> because customers
visiting the site were confused as to the relationship between the Respondent
and Complainant); see also Yahoo!
Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding bad faith where
Respondent linked the domain names, which contained the YAHOO! mark, to
several
of YAHOO!’s own websites).
Further, given the worldwide prominence
and notoriety of Complainant’s marks, it would seem quite difficult for
Respondent to have
possibly made any good faith use of the marks under
these circumstances. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make
any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., supra (finding that the
“domain names are so obviously connected with the Complainants that the use or registration
by anyone other than
Complainants suggests ‘opportunistic bad faith’”).
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 the requested relief
should be hereby
granted.
Accordingly, it is Ordered that the <ritzcarltonhotels.com> domain
name be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: April 30, 2002
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