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The Ritz Hotel, Limited v. Thomas Pon [2004] GENDND 1128 (16 August 2004)

1. The Parties

The Complainant is The Ritz Hotel, Limited, Paris Cedex, France, represented by Dorsey & Whitney, LLP, United States of America.

The Respondent is Thomas Pon, of Guangzhou, Guangdong China.

2. The Domain Name and Registrar

The disputed domain name <escoffierparis.com> is registered with Go Daddy Software, Inc. of Scottsdale, Arizona, United States of America ("Go Daddy Software").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 26, 2004. On June 28, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 28, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2004.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on August 4, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant asserts the following facts accompanied by relevant supporting evidence. The Respondent failed to respond to the Complainant’s factual assertions. In the absence of any evidence to rebut the Complainant’s assertions and having weighed the evidence adduced by the Complainant, the Panel accepts the following factual assertions set out in the Complaint:

(a)The Complainant is the owner and operator of The Ritz Paris Hotel located in Paris, France, which was founded in 1898 and is internationally recognized as one of the world’s most exclusive and famous hotels. The Complainant also owns and operates the Ritz Escoffier Cooking School, which is situated on the premises of The Ritz Paris Hotel, outside the Hotel’s main kitchens. The Ritz Escoffier Cooking School was established by the Complainant in 1988 and is founded on the heritage of Auguste Escoffier, the chef of the Ritz Paris Hotel at the time of its opening in 1898 and among the most important chefs of modern French cuisine. The Ritz Escoffier Cooking School offers classes and workshops in cuisine and all aspects of the art of entertaining, including floral decoration classes, and wine tastings, and caters to both professionals and amateurs. The Ritz Escoffier Cooking School is considered one of the most famous schools of French gastronomy in the world.

(b)In order to capitalize on the association between the Paris-based Ritz Escoffier Cooking School and its reputation for tradition, quality and French haute cuisine, the Complainant has entered into significant licensing and distribution arrangements for use of the ESCOFFIER PARIS and RITZ ESCOFFIER PARIS brands in connection with gourmet food products. RITZ ESCOFFIER gourmet food products have been sold in the United State and Canada since April 26, 2002, by the Complainant’s duly authorized exclusive licensee, US FoodService, Inc., to consumers through the Internet, including via the website "www.nextdaygourmet.com", as well as to institutions, including restaurants, hotels, corporations, firms and hospitals.

(c)The Complainant has also provided evidence that, since 1983, it has used, registered, and applied to register the marks ESCOFFIER, ESCOFFIER PARIS and RITZ ESCOFFIER PARIS in France and in more than twenty countries worldwide, in connection with a variety of goods and services related to the culinary arts, including, live cooking, instruction and diploma courses, gourmet food products, beverages, cookware, cooking utensils, dinnerware, bakeware, dishes, crystal glassware, cookbooks and other publications in the cooking field, kitchen towels, table linens, pot holders, oven mitts and serving platters.

(d)In addition, the Complainant also owns a registration for the domain name <ritzescoffier.com>, which it registered in September 29, 1999. The domain name is actively used to link to the official website of The Ritz Paris Hotel, operated by the Complainant, to provide information about, and to promote, The Paris Ritz Hotel, as well as the Ritz Escoffier Cooking School located on the premises of the Hotel.

(e)The Respondent registered the domain name <escoffierparis.com> on May 19, 2003. As at the date of filing the Complaint, the domain name was inactive.

(f)The Complainant did not grant either its permission, authority or consent to the Respondent to use the "Escoffier" marks or to register a domain name incorporating the marks, in any form whatsoever. The Respondent is also not a licensee of the Complainant and, based on the registration information supplied by the Respondent, does not appear to be commonly known by the name "Escoffier" or to be located in Paris, France where the Ritz Escoffier Cooking School and The Ritz Paris Hotel are situated.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant submitted as follows:

(a)As a result of the worldwide recognition and high standard of the Ritz Escoffier Cooking School operated in Paris by the Complainant and the use of the Complainant’s ESCOFFIER PARIS and RITZ ESCOFFIER PARIS marks under license for goods and services in the culinary arts field, the Complainant’s "Escoffier" marks have acquired substantial goodwill which belongs exclusively to the Complainant. Given the considerable time, effort and money expended to promote its services and products under the "Escoffier" marks throughout the world, these marks are well-known, enjoy worldwide renown in the culinary arts field, and serve to identify a single source, namely, the Complainant and its world famous Ritz Escoffier Cooking School.

(b)The domain name is confusingly similar to the Complainant’s marks as it incorporates the Complainant’s ESCOFFIER mark in its entirety, is identical to the Complainant’s ESCOFFIER PARIS marks, and is virtually identical to the Complainant’s RITZ ESCOFFIER PARIS marks. In such circumstances, the commercial impression conveyed by the Respondent’s domain name is that any associated goods or services are sponsored, endorsed, or affiliated with the Complainant and/or the Complainant’s Ritz Escoffier Cooking School located in Paris, when in fact no such association exists.

(c)The Respondent chose the domain name in an effort to free-ride off of the goodwill associated with the Paris-based Ritz Escoffier Cooking School, and the ESCOFFIER, RITZ ESCOFFIER PARIS and ESCOFFIER PARIS names and/or for the purposes of selling the domain name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs.

(d)The Respondent cannot demonstrate any legitimate interests in the domain name. The Respondent has not used or made any demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Nor is the Respondent making a legitimate noncommercial or fair use of the domain name without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademarks at issue. The Respondent is merely "squatting" on the disputed domain name.

(e)The Respondent registered the domain name without any bona fide basis for such registration, in an attempt to capitalize unfairly on the goodwill associated with the ESCOFFIER, RITZ ESCOFFIER PARIS and ESCOFFIER PARIS trademarks owned by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complain 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 directs that the Complainant must prove each of the following:

(a)that 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

(b)that the Respondent has no legitimate interests in respect of the domain name; and

(c)that the domain name has been registered and used in bad faith.

The discussion and findings of the Panel on each of these elements are set out below.

A. Identical or Confusingly Similar

The Complainant has satisfied the Panel that it has rights to the marks ESCOFFIER, RITZ ESCOFFIER PARIS and ESCOFFIER PARIS, whether by virtue of use or trademark registrations. Based on the evidence, it is abundantly clear for the Panel to conclude that the domain name incorporates the Complainant’s "Escoffier" marks (whether wholly or partially) and is, therefore, identical or confusingly similar to the Complainant’s marks.

B. Rights or Legitimate Interests

The Panel accepts that the Complainant did not grant either its permission, authority or consent to the Respondent to use the "Escoffier" marks or to register a domain name incorporating the marks, in any form whatsoever. The Panel also accepts that the Respondent is not a licensee of the Complainant. As such, there does not appear to be any contractual right for the Respondent to use the marks or register the domain name incorporating the marks.

Based on the registration information, it also does not appear that the Respondent is commonly known by the name "Escoffier" or is located in Paris, France where the Complainant and its Ritz Escoffier Cooking School and The Ritz Paris Hotel are situated.

The failure to respond to the Complaint does not provide the Panel with any evidence or information to arrive at a finding justifying the Respondent’s rights or legitimacy to the domain name. The distinctive nature of the Complainant’s "Escoffier" marks, the timing of the registration of the domain name and the reference to "Paris" in the domain name makes it difficult for the Panel to conceive a plausible situation or circumstance in which the Respondent could argue that it has rights or legitimate interests to the domain name, without seeking to ride on the Complainant’s goodwill. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four circumstances that conclusively establish the registration and use of a domain name in bad faith by a registrant. The list serves merely as a guide and the Panel is not confined to only the prescribed circumstances. This has been the accepted approach in past Panel decisions.

The Panel has carefully considered all the evidence submitted in this proceeding and the submissions made by the Complainant. The Panel finds that there is merit in the Complainant’s assertion that the "Escoffier" marks are well-known marks and distinctive in the field of culinary and that the Respondent chose to register the domain name to free-ride on the Complainant’s goodwill. As stated in paragraph 6B above, the Panel is unable to conceive a plausible situation or circumstance in which the Respondent could argue that it has rights or legitimate interests to the domain name, without seeking to free-ride on the Complainant’s goodwill. This intention to free-ride on the Complainant’s goodwill, by itself, may, in certain circumstances, constitute "bad faith" registration of the domain name.

In the circumstances of this proceeding, the Panel finds that the domain name was registered by the Respondent in bad faith. There does not appear to be any justifiable reason why the Respondent chose to use the distinctive ESCOFFIER mark coupled with the geographical reference to "Paris". It is open for the Panel to find, therefore, that the Respondent intended to associate its domain name with the culinary or business activities relating to the Complainant’s "Escoffier" marks. In Veuve Cliquot Ponsardin, Maison Fondee en 1722 v The Polygenix Group Co., WIPO Case No D2000-0163, the Panel held that "‘veuvecliquot.org’ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith".

With regard to the second limb of the third element of Paragraph 4(a) of the Policy (i.e. use in bad faith), it is a well established principle in domain name dispute proceedings, that use of a domain name in bad faith can include the mere passive holding of a domain name. In Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No.D2000-0003, the first domain name dispute proceeding which established this principle, the Panel stated that "…the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept." Therefore, given that the domain name remained inactive for more than one year from the date of the filing of this Complaint and taking this factor in the context of the facts as a whole, the Panel finds that, the domain name was also used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <escoffierparis.com> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist

Date: August 16, 2004