WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Ritz-Carlton Hotel Company, LLC v. Club Car Executive Transportation and Dennis Rooney

Case No. D2000-0611

 

1. The Parties

The Ritz-Carlton Hotel Company, LLC ("Complainant"), is a Delaware corporation with its principal place of business in Maryland and a contact address of 1 Ritz-Carlton Drive, Washington, D.C. USA.

The Respondent, Club Car Executive Transportation ("Club Car"), is the registrant of the domain name "ritzcarlton.net" with a listed mailing address of 1 Ritz-Carlton Drive, Dana Point, CA, USA. The Respondent, Dennis Rooney ("Mr. Rooney"), is the registrant of the domain name "ritzcarlton.org" with a listed mailing address of 1 Ritz Carlton Drive, Dana Point, CA, USA. Dennis Rooney is listed as the Administrative Contact in the registrations for both of these domain names.

 

2. The Domain Names

The domain names in issue are "ritzcarlton.net" and "ritzcarlton.org".

 

3. The Registrars of the Domain Names

The registrar of the domain name "ritzcarlton.net" is Network Solutions, Inc. ("NSI"), located at 505 Huntmar Park Drive, Herndon, Virginia, USA. The registrar of the domain name "ritzcarlton.org" is Register.com, Inc. ("Register.com"), located at 575 Eighth Avenue, 11th Floor, New York, New York, USA.

 

4. Procedural History

On June 15, 2000, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain names "ritzcarlton.net" and "ritzcarlton.org" and paid the required filing fee for appointing a single member Panel. The Complainant named Club Car and Mr. Rooney, collectively, as the respondent ("Respondent") in this proceeding. On June 22, 2000, the Center sent an

"Acknowledgement of Receipt of Complaint" by e-mail to the Complainant and a copy of the Acknowledgement to the Respondent.

On June 21, 2000, "Requests for Verification" concerning the domain names "ritzcarlton.net" and "ritzcarlton.org" were sent to NSI and Register.com, respectively. On June 23, 2000, Register.com provided a letter dated June 22, 2000, stating, in pertinent part: (i) that it received the Complaint from the Complainant as required by the Policy; (ii) that it is the registrar of the domain name "ritzcarlton.org"; (iii) that "Dennis Rooney" is the current registrant of the domain name registration with a listed postal address of 1 Ritz Carlton Drive, Dana Point, CA, USA; (iv) that "Dennis Rooney" is the administrative contact for the domain name with a listed e-mail address of clubcar2@aol.com; (v) that the "Uniform [sic] Dispute Resolution Policy is applicable to the domain name"; and (vi) that the domain name is active. On June 25, 2000, NSI provided a Verification Response to the Center stating, in pertinent part: (i) that it received the Complaint from the Complainant as required by the Policy; (ii) that it is the registrar of the domain name "ritzcarlton.net"; (iii) that "Club Car Executive Transportation" is the current registrant of the domain name registration with a listed postal address of 1 Ritz-Carlton Drive, Dana Point, CA,USA; (iv) that "Dennis Rooney" is the administrative contact for the domain name with a listed e-mail address of clubcar2@aol.com; (v) that the Registrarís 4.0 Service Agreement is in effect; and (vi) that the domain name is currently in "active" status.

On June 22, 2000, the Center sent a message to the Complainant notifying it of its deficiency in not submitting the Complaint in electronic format as required by paragraph 3(b) of the Rules. The Complainant corrected this deficiency and was found by the Center on June 26, 2000, to be in compliance with the formal requirements of ICANNís Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANNís Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPOís Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").

On June 27, 2000, the Center sent "Notification of Complaint and Commencement of Administrative Proceeding" to the Respondent. On July 1, 2000, the Center received an unsigned e-mail message from the Respondentís listed e-mail address (clubcar2@aol.com) stating that the "report" could not be received and to send it by mail. The Center has received no further correspondence or a response to the Complaint from the Respondent. On August 1, 2000, the Center sent a "Notification of Respondent Default" by e-mail to the Respondent and a copy of the Notification to the Complainant.

On August 10, 2000, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.

 

5. Factual Background

The Complaint is based on the service mark RITZ-CARLTON (Reg. No. 1,094,823 (first use 05/18/27; issued 06/27/78)) for hotel services registered with the U.S. Patent and Trademark Office. A copy of a printout for this registration based upon a search result from the U.S. Patent and Trademark Office online trademark database was attached as Annex C to the Complaint.

A search of NSIís Whois database shows that the Complainant is the registrant of the domain name "ritzcarlton.com". The Complainant is also the owner and operator of the corresponding Web site accessible by using this domain name. A copy of the printout of the home page of this site was attached as Annex B to the Complaint.

A search result from a query of NSIís Whois database shows that the domain name "ritzcarlton.net" was registered on October 3, 1999, to Club Car with Mr. Rooney listed as the Administrative Contact. A search result from a query of Registrar.comís Whois database shows that the domain name "ritzcarlton.org" was registered on November 26, 1999, to Mr. Rooney with Mr. Rooney also listed as the Administrative Contact.

 

6. Partiesí Contentions

 

Complainant

The Complainant asserts that it is the owner of numerous trademarks worldwide for the famous mark RITZ-CARLTON and that long prior to the Respondentís registrations of the domain names in issue, and at least as early as 1927, the Complainant adopted and began using its RITZ-CARLTON marks in interstate and international commerce in connection with its goods and services and that these marks have been used continuously and extensively by the Complainant since that time. The Complainant further asserts that it has invested substantial sums of money in developing and marketing its products and services and uses the domain name and mark RITZCARLTON.COM to promote and market its products and services. The Complainant also asserts that it operates one of the world's most well-known and extensive hotel and hospitality companies, that each year millions of its customers worldwide obtain products and services offered under the RITZ-CARLTON marks and that millions more are exposed to these marks through advertising and promotion. The Complainant asserts that the RITZ-CARLTON marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world and that many billions of dollars have been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts and in print media including newspapers and periodicals. As a result, the Complainant asserts that the RITZ-CARLTON marks have become well-known and famous among members of the purchasing public.

The Complainant asserts that Mr. Rooney registered both domain names based upon both registrations having identical mailing addresses and contact information (e.g., telephone and facsimile numbers, e-mail address, administrative and billing contact, etc.) and based upon Mr. Rooney being listed as the Administrative and Billing contact for both registrations.

The Complainant asserts that the domain names in issue are nearly identical to the famous mark RITZ-CARLTON and are confusingly similar to other RITZ-CARLTON marks and domain names.

The Complainant asserts that the Respondent activated a Web site at "ritzcarlton.org" and offered to sell the domain name for $20,000 and attached copies of the corresponding home page for the domain name and "offer" page as Annex G.

The Complainant asserts that on May 2, 2000, its counsel sent a letter to the Respondent requesting that the domain names "ritzcarlton.net" and "ritzcarlton.org" be transferred to the Complainant and attached a copy of the letter as Annex E.

The Complainant asserts that the Respondent in an e-mail message refused to transfer the domain names to it unless the Complainant agreed to provide the Respondent with one weekís free lodging at a RITZ-CARLTON hotel and attached a copy of the message signed by the Respondent dated June 8, 2000, as Annex F.

The Complainant asserts that the Respondent registered and is using the domain names in issue in bad faith and that the Respondent has no rights or legitimate interests in respect of the domain names based on the following:

(i) the Respondent registered the domain names in bad faith on October 1 [sic] and November 16, 1999 [sic], long after the first use of the RITZ-CARLTON marks and long after the marks became famous.

(ii) the Respondent has used the domain names in bad faith by offering to transfer them to the Complainant in exchange for one weekís stay at a RITZ-CARLTON hotel. The Respondentís bad faith use of the domain names is further evidenced by the Respondentís offer to sell "ritzcarlton.org" for $20,000. Such use infringes upon and dilutes the Complainantís famous mark RITZ-CARLTON and is likely to lead consumers to believe falsely that the Complainant endorses or is affiliated with the Respondent.

(iii) the Respondentís bad faith use of the domain names is further evidenced by the fact that the Respondent provided a false mailing address of "1 Ritz-Carlton Drive, Dana Point, California" in the Whois directory. In fact, there is no such address and the Respondent used that mailing address in an attempt to mislead consumers into believing that the Complainant is affiliated with or endorses the Respondent or his registration of the domain names in issue.

(iv) the Respondent cannot, in good faith, claim that it had no knowledge of the Complainantís rights in its famous RITZ-CARLTON marks. In fact, the Respondentís offer to sell the domain names for substantial compensation indicates that the Respondent was very cognizant of the fame and goodwill associated with the Complainantís marks. Furthermore, the Respondent cannot, in good faith, claim that he is commonly known by the name Ritz-Carlton or that he is making a legitimate noncommercial or fair use of the domain names. In fact, the Respondent registered the domain names solely to trade upon and profit from the goodwill the Complainant has created in its RITZ-CARLTON marks.

Based upon the above, the Complainant requests that the Panelist transfer the domain names in issue to it.

Respondent

The Respondent did not submit a response to the Complaint or otherwise contest the Complainantís assertions. Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondentís default as it considers appropriate. Nevertheless, the Panel can only rule in the Complainantís favor after it has proven that the requisite three elements listed below are present.

 

7. Discussion and Findings

The Complainant has submitted as evidence copies of printouts of the Whois records for the domain names in issue that show Club Car and Mr. Rooney having the same postal addresses and the same Administrative Contact, postal address, telephone number, facsimile number and e-mail address. Based upon the uncontested evidence presented, the Panelist determines that the joining of Club Car and Mr. Rooney as the Respondent in this proceeding is proper. Accordingly, the Panelist will continue to refer to Club Car and Mr. Rooney, individually and collectively, as the "Respondent".

The Proceeding - Three Elements

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute provider that:

(i) the domain name holderís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and

(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").

Element (i) - Domain Names Identical or Confusingly Similar to the Mark

The Complainant has provided evidence showing that it is the owner of the above-identified service mark RITZ-CARLTON. The domain names in issue "ritzcarlton.net" and "ritzcarlton.org" differ from the mark RITZ-CARLTON by the omission of a hyphen in the domain name. The Panelist concludes that the omission of a hyphen in the domain names is not sufficient to differentiate the domain names from the mark. The Panelist therefore finds that Element (i) has been satisfied based upon the domain names being virtually identical and confusingly similar to the mark RITZ-CARLTON.

Element (ii) - Rights or Legitimate Interests in the Domain Names

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proved based on its evaluation of all evidence presented, can demonstrate the holderís rights to or legitimate interests in the domain names. These circumstances include:

(i) before any notice to the holder of the dispute, the holderís use of, or 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; or

(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

No evidence has been presented that the Complainant at any time ever assigned, granted, licensed, sold, transferred or authorized the Respondent to register or use the mark RITZ-CARLTON in any form or manner. Accordingly, the Panelist finds that the Respondent, prior to any notice of this dispute, had not used the domain names in connection with any type of bona fide offering of goods or services. Nor is there any evidence that the Respondent is commonly known by the domain names or is making a legitimate noncommercial or fair use of the domain names. Rather, based upon the evidence presented by the Complainant, it appears that the Respondent is attempting to use the domain names for commercial gain. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain names and that Element (ii) has been satisfied.

Element (iii) - Domain Names Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the holderís web site or location.

It is hard to imagine that the Respondent was not well aware of the Complainantís mark RITZ-CARLTON when registering the domain names "ritzcarlton.net" and "ritzcarlton.org". Indeed, a review of the postal addresses for the domain name registrations shows that the Respondent listed his address as "1 Ritz-Carlton Drive" for the domain name "ritzcarlton.net" and as "1 Ritz Carlton Drive" for the domain name "ritzcarlton.org". Clearly, the Respondent inserting a hyphen between RITZ and "CARLTON for one registration and omitting it in the other shows that the Respondent is aware of the Complainantís exact mark. In addition, with the mark RITZ-CARLTON being well known and having a strong reputation as shown by the uncontested evidence submitted by the Complainant, the Panelist finds that the Respondent had actual knowledge at the time he registered the domain names in issue of the Complainantís rights in its mark.

To further support its assertion of bad faith by the Respondent, the Complainant has submitted evidence of the home page for the domain name "ritzcarlton.org" on which the domain name is offered for sale for $20,000 through a domain name reseller and a Domain Details Web page that repeats the offer as well as a message indicating that the domain name is "a perfect site for the hotel industry". The Complainant has not presented similar evidence for the domain name "ritzcarlton.net". However, the Complainant has submitted evidence of an e-mail message from the Respondent offering to transfer both domain names to the Complainant in exchange for one weekís stay at a RITZ-CARLTON hotel since the Respondent had spent "time [sic] money and effort in securing these names".

In the Complaint, the Complainant also asserted that the Respondentís bad faith use of the domain names was evidenced by the Respondent providing a false mailing address of "1 Ritz-Carlton Drive, Dana Point, California" in the Whois directory. However, the Complainant provided no evidence to support this assertion.

Based upon the evidence presented by the Complainant, the Panelist finds that the Respondent clearly has no rights or legitimate interests in the domain names in issue and has registered them primarily for the purpose of selling or transferring the domain name registrations to the Complainant for valuable consideration in excess of documented out-of-pocket costs. The Panelist therefore concludes that the Respondent has registered and is using the domain names "ritzcarlton.net" and "ritzcarlton.org" in bad faith and that element (iii) has been satisfied.

 

8. Decision

The Panelist concludes: (i) that the domain names in issue are virtually identical and confusingly similar to the Complainantís mark; (ii) that the Respondent has no rights or legitimate interests in the domain names; and (iii) that the Respondent has registered and is using the domain names in bad faith. Accordingly, the Panelist requires that the registrations of the domain names "ritzcarlton.net" and "ritzcarlton.org" be transferred to the Complainant.

 


 

Marylee Jenkins
Panelist

Dated: September 18, 2000