WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ellerman Investments Limited and The Ritz Hotel Casino Limited
Antonios Manessis (trading as .com and manessis.com)
Case No. D2001-1461
1. The Parties
1.1 The Complainants in this administrative proceeding are Ellerman Investments Limited, a private company with limited liability incorporated under the laws of England with its principal place of business in England and The Ritz Hotel Casino Limited, also a private company with limited liability, incorporated under the laws of England, with its principal place of business in England. The First Complainant is the 75% shareholder of the Second Complainant, both having London SW1A 1ES, UK as their business address.
1.2 The Respondent in this administrative proceeding is Antonios Manessis (trading as .com and MANESSIS.COM), Corfu, Greece, GR49100, Greece.
2. The Domain Name and Registrar
2.1 The Domain Name, the subject of this dispute, is <ritzclub.com>
2.2 The Domain Name is registered with Network Solutions, Inc, a Verisign Inc. company, 487, E. Mountainfield Road, Mountain View, CA 94043, USA,
3. Procedural History
3.1 The Complaint was filed electronically on December 17, 2001.
3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.
3.3 No legal proceedings have been initiated, as yet. (Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), paragraph 3(b)(xi)).
3.4 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500.00 has been made, payable to World Intellectual Property Organization.
3.5 The Complainant agreed that its claim and remedies concerning the registration of the Domain Name, the dispute, or the disputeís resolution shall be solely against the Domain Name holder and waived all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned Registrar, (c) the Registry Administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees and agents.
3.6 On December 28, 2001, the WIPO Arbitration and Mediation Center ("the Center") transmitted via e-mail to, a request for registrar verification in connection with this case and on January 2, 2002, the Center received a verification response confirming that the domain names is registered with Network Solutions and that the Registrant for the domain name is the Respondent.
3.7 Notification of Complaint and Commencement of Administrative Proceeding was sent to Respondent by the Center on January 24, 2002, electronically, by fax and by registered mail.
The electronic message was returned by the system with the error message:
Requested mail action aborted: exceeded storage allocation
The facsimile transmission was also unsuccessful.
The hardcopies of the Notification of Complaint were sent to the Respondent by registered post, as the address was a post office box to which a courier could not have been used. As of February 27, 2002 the Center reported:
we are still not in receipt of the delivery confirmation slip and so are uncertain as to whether it was received by the Respondent
3.8 Respondent was determined to be in default on February 15, 2002.
3.9 On February 15, 2002, Respondent communicated by e-mail with Center for the first time, to the effect:
this was the email i sent you on the 15th of February:
This is the first email I receive as a notification.
Which was the deadline?????
Could you please resend "original" notification....in order to forward
it to my lawyer.
To which the Center replied on February 18, 2002 with a message outlining earlier attempts to communicate with the Respondent and ended this message with the statement:
In order for us to communicate successfully with you we kindly request that you provide us with alternative contact details.
We would also be grateful if you were to confirm receipt of this email and two previously sent by us informing you of the appointment of Panel and Transmission of Case File to the Panel.
Please note that the Center will attempt to send this communication to you via facsimile as well.
3.10 On February 25, 2002 the Respondent again communicated with the Center by e-mail with the following message:
as you can see i did not receive your email of January 24th,
so the whole process is in question,
i will thus advise my lawyers...
Antonios Manessis .
3.11 The Center replied on February 26, 2002 to the Respondent as follows:
The Center acknowledges receipt of your email communication dated February 25, 2002 (see below). In this regard, please be advised that the Center has fulfilled its duties under paragraphs 2 of the Rules, as evidenced by our communication records sent to you by our email of February 25, 2002.
3.12 The single Panel member, Cecil O.D. Branson, Q.C., submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on February 25, 2002, in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by March 11, 2002.
3.13 Subsequent to receiving the file by electronic communication from the Center, the Panel, in light of the e-mail referred to paragraph 3.10 above, sought further information from the parties and the Center in order that it could be satisfied that the service requirements of the Complaint on the Respondent were conducted properly and that the Respondent thereafter had an adequate opportunity to file a Reply. As the result of subsequent communications from the Center and on behalf of the Complainants, this Panel is so satisfied of this and that it has jurisdiction to proceed.
3.14 The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
4. Factual Background
4.1 The Complainant Ellerman Investments Limited is a limited liability company incorporated under the laws of England and having its principal place of business in England. The Complainant, Ritz Hotel Casino Limited, is also a private company incorporated under the laws of England, with its principal place of business in England. The first Complainant is the 75% shareholder of the second Complainant. The second Complainant is the exclusive licensee of the first Complainantís rights in certain "Ritz" trademarks for the provision of gaming services at the Ritz Casino.
4.2 According to the Network Solutions, Inc Whois database, the Registrant of the domain name at issue is ".com". However the administrative and billing contact for the domain name is Mr. Antonios Manessis. Mr Manessis, in his capacity as the administrative and billing contact, gives the same address as ".com". In providing his contact details as administrative and billing contact he identifies the further trading style "manessis.com". Further, in the course of this administrative proceeding Mr. Manessis has represented that he is the correct registrant for the domain name. Therefore, this Administrative Panel finds that the Respondent in this administrative proceeding is Antonios Manessis, trading as ".com" and <manessis.com>, from Corfu, Greece.
4.3 The first Complainant is the owner of The Ritz Hotel (London) Limited, the company that owns and runs the well-known Ritz Hotel in London, England. The second Complainant is the recipient of an exclusive licence from the first Complainant in relation to the use of Ritz Trade Marks for the provision of gaming services associated with The Ritz Hotel. This operation has for many years been known as the "Ritz Club".
4.4 Over the years, since at least 1990, substantial sums have been expended in the promotion and marketing of the Ritz Club in the UK and internationally.
4.5 The Complainant Ellerman Investments Limited is the proprietor of a large portfolio of registered trademarks incorporating the marks, THE RITZ CLUB, RITZ and RITZ CASINO. Included in these are the mark "RITZ" registration no. 1509163 for the UK in class 41, gaming services and "RITZ" registration no. 7892 for Jersey, class 41 for gaming services, THE RITZ CLUB registration no. 2206186, in the UK for class 41 gaming services, and registration no. 7890 in Jersey for class 41 gaming services, and "THE RITZ CLUB and device" registration no. 2206189 in the UK for class 41, gaming services.
4.6 The flagship Ritz Club has, for many years, operated out of the former ballroom of the Ritz Hotel in London, but moved to St. James Street in 1998, where it continues to operate. In addition, the Ritz Club has sponsored numerous sporting events and charity events worldwide including events in the UK, Malaysia, Singapore, Hong Kong, Abu Dhabi, and Cyprus, and through a subsidiary runs casinos on board a number of cruise ships. These casinos hold "Ritz Club" nights on the ships where the casinos on board are decorated to look like the Ritz Club in London.
4.7 The operation of the Ritz Club enterprises as above create a turnover of millions of pounds annually.
4.8 The first Complainant has many other pending trademark registrations for the trademarks Ritz, the Ritz Club and Ritz Casino for gaming services throughout the world and is planning to sponsor website for gaming services, which one of the likely Domain Names is <theritzclub.com>, which is already owned by the first Complainant.
5. Partiesí Contentions
5.1 The Complainant says that the Domain Name <ritzclub.com> is identical to its registered trademark THE RITZ CLUB and confusingly similar to its registered trademark RITZ CASINO for gaming services because it incorporates the "primary, distinctive element" of the first Complainant's trade marks, i.e. the word "Ritz".
5.2 The Complainant says that the Respondent has no rights or legitimate interests in the Domain Name. In support of this allegation, it has demonstrated that it conducted a WISS trademark search world-wide on the trademark RITZ on September 5, 2001, and at that date, subject to the accuracy and currency of the search, no trademarks in the name of the Respondent were identified. It also employs a trademark watching service on the trademark RITZ and it has not received any notices of any applications for the trademark RITZ or RITZ CLUB by the Respondent since September 5, 2001 or ever. As far as the Complainants are aware, the Respondent has no trademark rights in the mark RITZ CLUB.
5.3 The Complainants add that as they are in the process of setting up a web-site to provide, via a related company, gaming services online over the Internet, the Respondent's registration and use of the Domain Name for gaming services will inevitably cause confusion in the minds of the Second Complainant's existing customers and potential customers for gaming services, who will think that the Respondent's gaming services originate from the owner or licensee of the registered marks in which both Complainants have an interest.
5.4 The Complainants submit that the Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name.
5.5 The Complainants submit that the Domain Name should be found to have been registered and used in bad faith, inter alia, for the following reasons:
(a) The web site at <ritzclub.com> was originally inaccessible, and although the Respondent has not been actively trading from the website under the Domain Name, inactivity can constitute use of the Domain Name in bad faith.
(b) The Respondent has demanded an extortionate sum which greatly exceeds his actual expenses and seeking payment which exceeds out of pocket expenses for the transfer of a Domain Name can in itself constitute commercial use of the Domain Name.
(c) The Complainants, through an agent, contacted the Respondent about this matter, after which the website became active in approximately November 2001, and shortly after began to carry a notice which states that the web site hopes to be online by Christmas 2001. This, suggest the Complainants, shows that the Respondent was trying to put pressure on the Complainants to agree to his demands for money.
The Respondent acquired the Domain Name primarily to sell it to the Complainants
(a) The Complainants approached the Respondent via a private investigator, first by email and then through a follow up telephone call. The Respondentís response by an email dated August 23, 2001, was that he is "in the 'on-line gaming' space for the last 2Ĺ years and YES I plan to develop all my domains!". The Respondent also made it clear that the Domain Name was for sale but only if "an offer [he] cannot refuse" was made. The Complainants say that it is clear from this email that the Respondent intends to use the Domain Name for the provision of gaming services, which constitutes an infringement or a threatened infringement of the registered Ritz Trade Marks.
(b) Upon being requested to state his asking price for the Domain Name, the Respondent replied by e-mail dated August 27, 2001, that the Domain Name "is a very well known phrase in the Gaming space with excellent brand awareness". This, say the Complainants, can only be a reference to the Complainantsí reputation for gaming services, since (as far the Complainants are aware) no one else in the world provides gaming services under the name "Ritz Club".
(c) The Respondent initially demanded the sum of US$290,000 from the Complainantsí agent to purchase the Domain Name which say the Complainants, is clearly an extortionate amount and, given that the Respondent has not been providing gaming services, this huge value attributed to the name can only result from the value and goodwill built up by the Complainants through their use of the Ritz Club trademark.
(d) The Complainants' authorized representatives wrote to the Respondent on September 10, 2001 setting out the Complainants' rights in the Ritz Trade Marks and made an offer, in the interests of avoiding unnecessary legal costs, to pay the Respondent's reasonable out of pocket costs.
(e) Following further correspondence with the Complainants' solicitors, the Respondent subsequently demanded US$145,500 for the transfer of the Domain Name in an email dated October 3, 2001, which the Complainants say is evidence of the bad faith of the Respondent in registering the Domain Name pursuant to paragraph 4(b)(i) of the UDRP.
The Respondent intends to attract Internet users to the website by creating confusion with the Complainantsí marks.
(a) Prior to the Complainants contacting the Respondent, the Respondent was aware of the brand RITZ for gaming services and the reputation associated with it, which is owned by the Complainants.
(b) Since being contacted by the Complainants, the Respondent has been made aware of the full extent of the Complainants' rights in the Domain Name.
(c) The Respondent has said in correspondence that he intends to use the Domain Name to provide gaming services. The web site at the Domain Name states that it will be active by Christmas 2001.
(d) The Respondent, say the Complainants, therefore deliberately intends to create a likelihood of confusion with the registered trademarks for gaming services.
(e) As a result of the world-wide fame of the Ritz Club, there is no legitimate user of the RITZ CLUB mark for gaming services other than the Complainants. The Respondent was aware of the reputation associated with the Ritz Club mark from before the time that he was first approached on behalf of the Complainants. Where a Respondent knows, or should have known of the Complainantsí use and registration of the trademark before registering the Domain Name, this constitutes bad faith.
(f) The Respondent has not given any explanation to the Complainants why it chose the Domain Name. Where the trade mark incorporated in the disputed Domain Name is extremely well known, intent to use in bad faith may be inferred where the Respondent has shown no good reason for choosing that particular Domain Name. The only possible reason for the Respondent to have registered the Domain Name is to benefit from the goodwill and reputation associated with the Complainantsí "Ritz Club" mark. This is evidence of the bad faith of the Respondent in registering the Domain Name.
(g) The registration of the Domain Name was therefore made in bad faith pursuant to paragraph 4(b)(iv) of the UDRP.
(h) The Complainants have plans to launch a website for gaming services, of which one of the likely Domain Names is <theritzclub.com> (already owned by the first Complainant) and its plans will be seriously affected by the Respondent's plans for a website at the Domain Name. The customers of the second Complainant are bound to assume that the gaming services offered by the Respondent are related to the second Complainant and if the Respondent's services are not of the highest quality and probity, the reputation and goodwill associated with the Ritz Club may be adversely affected. Further damage will occur if the security of the Respondent's website does not satisfy the stringent requirements that the customers of the second Complainant have come to expect from gaming services originating from the second Complainant.
5.6 The Respondent has not filed a Response to the Complaint, even though it was given additional time by this Panel to do so until Friday, March 8, 2002. Under para. 5(e) of the Rules, it is provided that if a Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.
C. No Other Submissions
5.7 The Panel has not received any other requests from Complainant or Respondent regarding further submissions, beyond the Complaint, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy states that the Complainant must prove each of the following requirements:
(i) 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
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
These matters are considered in turn below.
(i) The Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
6.2 This first factor contains two elements:
First, does Complainant have rights in a relevant mark, and second, is the Domain Name identical or confusingly similar to that mark. Plaza Operating Partners, Ltd. v. POP Data Technologies and Joseph Pillus, WIPO Case No. D2000-0166.
6.3 This Panel accepts that the first Complainant, namely Ellerman Investments Limited, is the holder of the registration for the marks referred to above.
6.4 The only difference between the Domain Name, <ritzclub.com> and the mark THE RITZ CLUB in which first Complainant has rights, as above, is the deletion of the word "the" in the Domain Name. The absence of the article "the" does not lessen the virtually identical and confusingly similar nature of a Domain Name: The Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory World, WIPO Case No. D2000-0474.
6.5 "Essential" or "virtual" identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics Inc. v. Cam Creek Co. Inc., WIPO Case No. D2000-0113, Nokia Corp. v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, and America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Disney Enterprises, Inc. v. John Zuccarini, d/b/a Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd., WIPO Case No. D2000-0995; America Online Inc. v. Andy Hind, WIPO Case No. D2001-0642; The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571.
(ii) Respondent has no rights or legitimate interests in respect of the domain name.
6.6 Para. 4(a) of the Policy requires the Complainant to prove each of the three material elements, including that the Respondent has no legitimate interests in respect of the Domain Name. Indeed, the concluding sentence says "In the administrative proceeding, the Complainant must prove that each of these three elements are present." This may present a problem for a Complainant as it will therefore have to prove a negative. This problem is exacerbated where the Respondent does not participate in the proceedings as Complainant will have no way of knowing what particular rights or legitimate interests will be advanced on behalf of the Respondent. On the other hand, para. 4(c) of the Policy, with the heading "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint", goes on to say:
"When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii). . . ."
This appears to contradict the earlier suggestion that Complainant bears the onus throughout the proceedings. The various approaches taken by Panels to this dilemma have been fairly set out in the Panel decision in Do The Hustle, LLC v. Tropic Web WIPO Case No. D2000-0624. Some Panels have said that the Respondent need do nothing in the absence of affirmative proof by the Complainant that the Respondent has no rights or legitimate interest in respect of the domain name at issue. See VereSign, Inc. v. VeneSign, C.A., WIPO Case No. D2000-0303; Gassen Diamonds B.V. v. Van Etten Bernardus Joacbus, NAF-0149a; NAF-0149b; Beijing Pernot Ricard Winery Co.Ltd. v. Capital Enterprises Group, Inc., NAF-0177; Vanguard Medica Limited v. Theo McCormick, WIPO Case No. D2000-0067; Penguin Books Limited v. The Katz Family and Anthony Katz, WIPO Case No. D2000-0204. Other decisions have dealt with this problem by reducing the burden of proof upon the Complainant to one which is "relatively light". See Educational Testing Services v. Netkorea Co., WIPO Case No. D2000-0087; Europay International S.A. v. Eurocard.com, Inc. EuroCard.org and Chad Folkening, WIPO Case No. D2000-0173. Yet, other Panels have suggested that the failure of the Respondent to provide any evidence that it comes within the wording of para. 4(c) in determining whether a Complainant meets this burden of proof under para. 4(a)(ii). See Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150. The greatest number of Panel decisions have held that the interaction between para. 4(a)(ii) and 4(c) is such that the obligation is on the Complainant to make out a prima facie case and that having been done, it is for the Respondent to demonstrate the contrary. See Document Technologies, Inc. v. International Electronic Communications Inc. WIPO Case No. D2000-0207; Universal City Studios, Inc. v. G.A.B. Enterprises WIPO Case No. D2000-0416; Newman/Haas Racing v. Virtual Agents, Inc. WIPO Case No. D2000-1688. In the Do The Hustle, LLC v. Tropic Web case, the Panel went further and held that there was a need for a Complainant to bring forward "concrete evidence" to this approach to which the Panel meant evidence which constitutes more than mere personal assertions. Indeed, the Panel went on to say:
"In short, it is not sufficient for a respondent to say, ĎEveryone knows me by x name,í or ĎI have witnesses who would say . . í. Evidence in the form of documents or third party declarations should be furnished in support of such assertions. A panel is not required to blindly accept assertions offered by a respondent, any more than it is required to accept unsupported assertions offered by a complainant. It is especially important under this procedure to test respondentís assertions for evidentiary support and credibility, since normally the complainant has no opportunity to counter the respondent's assertions, while the respondent does have the opportunity to counter those of the complainant."
That Panel went so far as to say that failure of a Respondent to come forward with such evidence is tantamount to admitting the truth of Complainantís assertions in this regard. As for whether it is sufficient for the Complainant to make a prima facie case, it has been held that where the domain name is Complainantís well-known name and there is evidence the Complainant had not granted the Respondent a license to use the Complainantís name, this will suffice. See Newman/Haas Racing v. Virtual Agents, Inc. WIPO Case No. D2000-1688. Where a Respondent asserts no rights or legitimate interests in the disputed Domain Name, and the Panel cannot presently conceive of any legally sound basis on which any such assertion might be made, despite the lack of any further statements made by the Complainant other than an assertion that the Respondent has no rights or legitimate interests in the disputed Domain Name, can still result in a finding for the Complainant on this element. See America Online, Inc. v. Kandl Co. Ltd., WIPO Case No. D2000-1695.
Another Panel has held that the correct approach is for the Complainant to make the allegation and put forward what it can in support (e.g. it has rights to the name, the Respondent has no rights to the name of which it is aware, it has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head. See Margaret Drabble v. Old Barn Studios Ltd., WIPO Case No. D2001-0209.
6.7 This Panel finds that the first Complainant in this case has brought itself within the above tests and therefore shown that the Respondent has no rights or legitimate interests in the Domain Name.
(iii) The Respondent has registered and is using the Domain Name in bad faith.
6.8 As for a significant period of time the website <ritzclub.com> was inactive, the Complainants rely on Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 where the Panel stated: "the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts." The Complainants also rely on Mary-Lynn Mondich, et al v. Shane Brown, WIPO Case No. D2000-0004 where the Panel said: "it is possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use". Respondent had owned the Domain Name since January 1999, over two years, which allowed the Panel to find a lack of intention to use the Domain Name in good faith. The Panel in the Telstra case went on to make it clear that in addition to the inactivity there must also be an intention to sell, rent or transfer the registration, that is a pattern of conduct preventing a trade mark ownerís use of the registration, for paragraph 4(b)(ii); with the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii). The question of what circumstances of inaction (passive holding) can constitute a Domain Name being used in bad faith cannot be answered in the abstract, but only in respect of the particular facts of a specific case. Therefore, the Administrative Panel must give close attention to all the circumstances of the Respondentís behaviour. I have done this and find that there has been sufficient behaviour shown in this case to make a finding of bad faith in respect of the Respondent. In particular, reference is made to the clear knowledge demonstrated by the Respondent of the Complainantsí reputation for gaming services shown from the Respondentís comment that his Domain Name "is a very well known phrase in the Gaming space with excellent brand awareness". Also, the initial demand for the sum of US $290,000 for the Domain Name is clearly an extortionate amount and leads to a conclusion that the Respondent knew or should have known of the Complainantsí use and registration of the trademark before registering the Domain Name. This constitutes bad faith. See SportSoft Golf Inc v Hale Irwin's Golfer's Passport, NAF Case FA94956; E&J Gallo Winery v Oak Investment Group, WIPO Case No. D2000-1213; Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC., WIPO Case No. D2001-1121.
6.9 Given the evidence put forward by the Complainants, and the lack of any Response from the Respondent, the Panel finds that the Domain Name <ritzclub.com> has been registered and is being used in bad faith.
7.1 This Panel finds and decides that:
(a) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(b) the Complainants have established that Respondent has no rights or legitimate interests in respect of the Domain Name <ritzclub.com>;
(c) the Complainants have established that the Domain Name has been registered, and is being used in bad faith.
7.2 The ruling of this Panel is that the registration of the Domain Name <ritzclub.com> be transferred to the Complainant Ellerman Investments Limited.
Cecil O.D. Branson, Q.C.
Dated: March 9, 2002