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The Hotel Ritz, Limited v. Kim Min-Kouk [2004] GENDND 703 (23 June 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Hotel Ritz, Limited v. Kim Min-Kouk

Case No. D2004-0154

1. The Parties

The Complainant is The Hotel Ritz, Limited, Paris, France, represented by Deprez Dian Guignot, of France.

The Respondent is Kim Min-Kouk, Seoul, Republic of Korea, represented by Hwang Mok Park P.C., Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <weddingritz.com> is registered with Network Solutions, Inc. Registrar.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2004. On February 27, 2004, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On March 1, 2004, Network Solutions, Inc. 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 March 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2004. The Response was filed with the Center April 1, 2004.

In the period April 6 to May 24, 2004, a total of four supplemental filings, two from each of the parties, were filed with the Center. The acceptance of supplemental filings is subject to the discretion of the Panel. The Panel has communicated via e-mail, and have decided to accept Complainant’s response filed with the Center on April 6, 2004. The further filings by the parties bring little new to the case, and the Panel has decided not to accept or consider these.

The Center appointed Peter G. Nitter, Clive, Duncan Thorne and Sang Jo Jong as panelists in this matter on June 2, 2004. The Panel finds that it was properly constituted. Each member of 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

Complainant is in the hotel business, and is the holder of over 500 trademark registrations in more than 120 countries throughout the world for “RITZ”, “HOTEL RITZ” and “RITZ HOTEL”. The “RITZ” trademark has been in use by Complainant and its predecessors since 1908.

Respondent has registered the domain name <weddingritz.com>.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to Complainant’s trademark.

The domain name at issue consists of the Complainant’s well-known mark “RITZ” and the English word “wedding”, the meaning of which is largely perceived all over the world. The Respondent has purposely chosen to incorporate the Complainant’s trademark, in his domain name, the word “wedding” being merely descriptive of the Respondent’s business. Indeed, according to the documents gathered, the Respondent deals in the scope of wedding consulting, which notably consists in the organization of ceremonies in the most luxurious Korean hotels.

The addition of the word “wedding” is not meant to distinguish the domain name from the Complainant’s well-known mark, but rather intensifies the likelihood of confusion between the domain name and the Complainant’s trademark. In that sense, see ACCOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517 regarding the domain name <ibishotels.com>, which has been deemed confusingly similar to the trademark “IBIS”. See also Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610 transferring <marriottreward.com> to Marriott International, Inc. and Sporoptic Pouilloux Sa C./ Euroglisse Sarl, WIPO Case No. D2000-0473 transferring <vuarnet-sports.com> to Vuarnet.

Respondent does not have any rights or legitimate interests in the disputed domain name.

Respondent is not a licensee of the Complainant and is, in no way, authorized to use the Complainant’s famous trademarks “RITZ” and “HOTEL RITZ”, and to file any domain name incorporating the Complainant’s trademark.

The Respondent uses the high reputation of the Complainant’s mark “RITZ” to promote its services related to wedding organization and consulting, implying an endorsement, by the Complainant of its services.

Complainant has required Respondent to cease using the mark “RITZ” within the challenged domain name through cease and desist letters sent on July 21, 2003, and on October 8, 2003. Respondent has however not discontinued his use of the domain name, nor has he submitted any evidence and has failed to demonstrate, pursuant to Paragraph 4 (c) of the Policy, that he has any rights or legitimate interest in the litigious domain name.

Moreover, the Korean Trademark Office (KIPO) has already ruled in favor of the Complainant against the Respondent and its previous CEO, with respect to the use of the mark “WEDDINGRITZ”.

Respondent has registered and is using the domain name at issue in bad faith.

The disputed domain name has been reserved and used in order to mislead consumers by attracting them to Respondent’s web site for his commercial gain. Such use is tarnishing the trademark of the Complainant.

The trademark “RITZ” is worldwide famous and well-known within the meaning of Article 6 bis of the Paris Convention for the Protection of Industrial Property, and Article 16.2 of the Agreement on the Trade Related Aspects of Intellectual Property.

It is thus obvious that the Complainant’s trademark “RITZ” is well-known, and Respondent could not have been unaware of this.

Respondent has previously been using the company name “The Ritz, Ltd.” Respondent has furthermore alleged that it had been authorized to use the “RITZ” mark by the Hotel Ritz Carlton in Seoul, which was proven untrue and definitely shows the fraudulent nature of the Respondent’s conduct.

B. Respondent

The domain name at issue is not confusingly similar to Complainant’s trademark.

The term “ritz”, which forms a part of the domain name at issue is identical to a trademark of the Complainant. On the other hand, this is a European family name, and is furthermore a term which lots of enterprises which have nothing to do with the Complainant use as their trademarks or domain names. Thus, the rights for the mark “RITZ” are co-owned by many entities. Therefore, the Complainant’s exclusive right for the mark “Ritz” does not cover all products or services, and is limited to the goods or service designated by the Complainant upon registration of a trademark. “Ritz” cannot be deemed a word that only the Complainant has used and can use. Instead, “Ritz” is a term which can be widely used as a mark for various types of business run by the “Ritz” family.

The business of the Respondent is absolutely different from the business done by the Complainant and services covered by its trademark right. Given this, although the domain name is similar to a trademark of the Complainant, the domain name is impossible to confuse with a trademark of the Complainant and is outside the purview of its trademark right.

In connection with Respondent’s wedding consulting business, which is outside the range of the Complainant’s rights, the right to use a domain name including the term “Ritz” cannot be acquired by consent of the Complainant.

Respondent established a company on April 20, 2000, the time far before receipt of the initial cease and desist letter dated July 21, 2003, and has engaged in a wedding consulting service under the domain name in issue since April 25, 2000. Respondent has been already widely recognized by the persons concerned and consumers of Korea’s wedding consulting industry under the term “weddingritz”. Therefore, the Respondent should be judged to have legitimate interests in the domain name, pursuant to Paragraph 4(c) of the Policy.

In April, 2000, upon registration of the domain name, the Respondent was not aware of “Hotel Ritz” in Paris, and became firstly aware of its existence in July 2003, upon receipt of the first cease and desist letter.

Respondent cannot agree upon the claim that consumers can be attracted by the trademark of the Complainant in other business fields than the hotel industry.

Many companies that have nothing to do with the Complainant have legally used “Ritz” as their trademark or domain name. Accordingly, when meeting the term “Ritz” by chance, general consumers are reminded of various products of several companies, and not Complainant.

Respondent has not argued that it has been authorized to use a domain name and trademark by the “Hotel Ritz-Carlton Seoul”. In its response to the Complainant’s cease and desist-letter, the Respondent attached the cooperation agreement made between the Respondent and “Hotel Ritz-Carlton Seoul” in connection with its recommendation of a banquet ball of “Hotel Ritz-Carlton Seoul” as a wedding hall for customers, and merely stated that Respondent was not hostile to the Complainant and rather maintained a close cooperation with its related companies.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant’s trademark is not identical to the domain name at issue, and the question is therefore whether there is a confusing similarity between the two.

The domain name at issue is comprised of Complainant’s trademark “RITZ”, and the generic term “wedding”. In the opinion of the Panel, “RITZ” is the dominant and distinctive part of the domain name at issue.

The trademark “RITZ” must be regarded as famous, due to its long history and registrations in more than 120 jurisdictions world-wide. The assessment of confusing similarity shall be on a general basis, and not be linked to the jurisdiction of Respondent or any other specific jurisdiction.

Previous panel decisions have found confusing similarity to be present when a domain name consist of a well-known trademark in combination with a generic term. Hotel services and wedding services may be closely linked to each other. In the Panel’s opinion, it is therefore likely that Internet users familiar with the Ritz hotels will be lead to believe that the disputed domain name is connected to wedding services offered by Complainant, or someone endorsed by or affiliated with Complainant.

Respondent has asserted that the disputed domain name is impossible to confuse with Complainant’s trademark, as the business of the Respondent is absolutely different from the business of the Complainant. How the web site connected to the disputed domain name is used has however no bearing upon the issue whether the domain name is confusingly similar to the trademark, as such confusion already will have taken place when entering the web site (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).

The fact that “Ritz” is used as a trademark for certain products without any relation to hotel services, such as the Ritz cracker of Kraft Food Inc., and that there exists other Internet domain names comprising the term “ritz” (which may or may not infringe upon Complainant’s rights) does not prevent the domain name in issue being confused with the Complainant’s trademark.

As a result of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark “RITZ”.

B. Rights or Legitimate Interests

Complainant has asserted that the Respondent has in no way been authorized to use its trademark “RITZ”, and this has not been contested by Respondent. Respondent has furthermore confirmed that he has no registered rights in “weddingritz”.

The documentation of the case supports Respondent’s claim that he has used the domain name in connection with commercial services prior to notice of the dispute. The domain name at issue was registered by Respondent on April 25, 2000, and the first cease and desist letter from Complainant was sent to Respondent on July 21, 2001. Respondent has asserted that he therefore should be judged to have legitimate interests in the domain name, pursuant to Paragraph 4(c) of the Policy.

The question is however whether Respondent has provided a reasonable explanation for his selection of a domain name comprising the word “ritz”. Respondent has not actually given an explanation why he chose to include the term “ritz” as part of the contested domain name. He has merely referred to the fact that “Ritz” is a European family name, and that it is used as a trademark or domain name by many enterprises which has nothing to do with Complainant.

As a result of the fame of Complainant’s trademark “RITZ” and trademark registrations worldwide, including in the Republic of Korea, Respondent’s prior use of the company name “The Ritz Ltd.”, Respondent’s demonstrable knowledge of the Hotel Ritz-Carlton Seoul, and Respondent being in a business which is closely linked to the hotel business, the Panel finds that Respondent must have been aware of Complainant’s trademark “RITZ” previous to his registration of the domain name at issue.

The Panel therefore finds that the Respondent has adopted and used the term “ritz” in order to attract for commercial gain Internet users to his web site, by exploiting the fame and exclusiveness of Complainant’s trademark. The Panel furthermore concludes that a use which knowingly trades on the fame and reputation of a mark cannot constitute a “bona fide” offering of goods and services, as a conclusion to the contrary would imply that a Respondent would be able to rely on intentional infringement in order to demonstrate a legitimate interest pursuant to Paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

Having reached the conclusion that Respondent has knowingly adopted and used the domain name at issue in order to attract for commercial gain Internet users to his web site, by exploiting the fame and exclusiveness of Complainant’s trademark, the Panel concludes that Respondents has registered and is using the contested domain name 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 be transferred to the Complainant.

Peter G. Nitter
Presiding Panelist

Clive Duncan Thorne
Panelist

Sang Jo Jong
Panelist

Dated: June 23, 2004