WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Ritz Hotel, Limited v. Damir Kruzicevic
Case No. D2005-1137
1. The Parties
The Complainant is The Ritz Hotel, Limited of Paris, France, represented by Deprez Dian Guignot of France.
The Respondent is Damir Kruzicevic of Split, Croatia, represented by the Law Office of Howard M. Neu, PA, of the United States of America.
2. The Domain Name and Registrar
The disputed domain name <ritz-hotel.com> (“the Domain Name”) is registered with Fabulous.com (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2005. On November 1, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 2, 2005, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and as the administrative, billing, and technical contact for the Domain Name. 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 proceeding commenced on November 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 28, 2005. The Response was filed with the Center on November 27, 2005. In his Response, the Respondent required the appointment of a three-member panel.
The Center appointed David E. Sorkin and Clive Duncan Thorne as panelists in this matter on December 6, 2005. On December 14, 2005, the Center appointed Warwick Smith as Presiding Panelist. 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.
Following receipt of the Response, the Complainant forwarded to the Center a supplementary filing (referred to hereafter as “the Supplementary Complaint”). By Procedural Order No. 1 dated December 28, 2005, the Panel determined that it would receive and consider the Supplementary Complaint, subject to the Respondent being given the right to file a further Response limited to the matters traversed by the Complainant in the Supplementary Complaint. The time for the Panel to give its decision in the proceeding was extended to January 16, 2006.
The Respondent duly filed a further Response (referred to hereafter as “the Supplementary Response”) on January 9, 2006, and the Supplementary Response has been considered by the Panel.
On January 10, 2006, the Complainant emailed a further two-page submission direct to the Panel. That further submission was not requested by the Panel, and it was submitted in apparent disregard of the clear directions set out in the Panel’s Procedural Order No. 1. The Panel has not taken the further submission into account in reaching its decision in this proceeding.
4. Factual Background
The Complainant was incorporated in London, United Kingdom, in 1896, with a view to operating what was then planned to be a revolutionary, luxurious hotel in Paris to be known as the Ritz Hotel (referred to hereafter in this decision as “the Hotel”). The Hotel, which takes its name from the founder of the Complainant, the Swiss hotelier César Ritz, opened in or about June of 1898 in the Place Vendôme in Paris. According to the Complaint, it was then the most modern hotel in the world, being the first in the world to provide each room with electricity, telephone, and bathroom.
An article from “Hotel” Magazine in 1995 describes the history of the Hotel. It remained in the Ritz family until Charles Ritz died in 1976. In 1979 it was purchased by members of the Al Fayed family, who embarked on an extensive refurbishment project. One of the innovations was the establishment of the Ritz Escoffier École de Gastronomie Française, a non-residential school offering a complete programme of tuition in French cuisine. A November 1995 Evening Standard article produced by the Complainant described the Ritz Escoffier as “the only full-time cooking school in the world attached to a grand hotel”, and its establishment appears to have been designed to enhance the Hotel’s reputation as an elite provider of luxurious accommodation, including fine cuisine.
Documents produced by the Complainant confirm that the Hotel is, and has been from at least the early part of the twentieth century, a world famous institution, with a worldwide reputation for elegance and splendour. Over the years, the Hotel has been voted “best hotel in Europe” and “best hotel in the world”, by numerous magazines and travel writers.
Many famous people have stayed there, including royalty. In the 1920s, the writer F Scott Fitzgerald published his short story “A Diamond as Big as the Ritz”, which referred to the Hotel and added to its world-wide fame. The famous author, Ernest Hemingway, is reported to have once said that he hoped heaven would be “as good as the Ritz”. One of the bars in the Ritz Hotel is still named for that author.
A November 1993 article from the Sun – Sentinel (Fort Lauderdale, Florida, USA) noted that the name of [César] Ritz “has entered the lexicon as a synonym for the high life”. That appears to be substantially correct. The Oxford English Dictionary defines the colloquial American expression “put on the Ritz”, as “to assume an air of superiority”, and “ritzy” as “having class, poise or polish, smart, stylish, glamorous, ‘classy’”. Both expressions appear to be derived from the name of the Hotel, as is the common expression “It’s not the Ritz” (used colloquially as a negative expression describing basic, or inferior, living accommodation).
A 1995 magazine article produced by the Complainant asserted that the Hotel was totally independent, and did not belong to any group. The Complainant was said to have no subsidiaries. There are Ritz London and Ritz Madrid hotels, and there are also Ritz-Carlton Hotels, but the article reported that none of those hotels has any connection with the Hotel, and that none is owned or operated by the Complainant. The magazine article just referred to explained how that situation originally came about, in the following terms:
“Apparently friends of Mr. Ritz did ask him whether they could use his illustrious name for their hotels and in all sincerity he agreed. Of course this was before franchising was ever thought of!”
The Supplementary Complaint confirms that the (apparently independent) proprietors of the Ritz London and Ritz Madrid Hotels, are respectively registered as proprietors of the mark RITZ (for the provision of hotel services) in the United Kingdom and Spain. The registered proprietor of the mark RITZ in the United States of America (again in respect of the provision of hotel services), is The Ritz-Carlton Hotel Company LLC (hereafter referred to in this decision as “RCHC”), which is part of The Marriott Group and which operates hotels in a number of countries under the mark RITZ-CARLTON. It appears from the Response that RCHC also operates “Ritz” hotels in some American cities, including Boston, Chicago and San Francisco.
The Complainant’s Trademarks
The Complainant is the registered proprietor of the word mark RITZ in France, in international classes 29, 30, 31, 32, 33, 41, and 42. The earliest of those registrations date from April 1908, and they are the registrations in classes 29, 30, 31, 32 and 33. The registrations in international classes 41 and 42 date from August 1965, when it appears that it first became possible to register service marks in France. The Class 41 and Class 42 applications claimed continuous use of the RITZ mark since 1898.
The Complainant is also the proprietor of the word mark RITZ in numerous countries other than France, including Croatia, being the Respondent’s apparent country of residence. The international registrations, including that in Croatia, appear to have been in force since May of 1962.
With the Supplementary Complaint, the Complainant annexed copies of trademark certificates evidencing its ownership of the word mark RITZ in a number of jurisdictions. Some of the certificates are in foreign languages (and without translations), but it is not necessary to refer to the registrations in all jurisdictions. It is sufficient to say that the Complainant is the registered proprietor of the word mark RITZ in international Class 42, in each of the following countries: France (with effect from August 1965), Australia (with effect from August 1984), Singapore (with effect from October 1995), the Seychelles (with effect from April 1996), Malta (with effect from January 2002), the Philippines (with effect from July 1999), Oman (with effect from August 1996) and Ireland (with effect from February 20000). The various services for which the mark is registered in a number of these jurisdictions, including Australia, Singapore, Seychelles, Oman and Malta, include hotel accommodation, temporary accommodation, and the provision of reservation services for hotel accommodation.
The Relationship Between the Complainant and RCHC
With the Supplementary Complaint, the Complainant provided extracts from a November 1998 licence agreement between itself and RCHC. While the entire document was not produced, the essential point of the agreement appears to have been the granting by the Complainant of an exclusive licence to RCHC, to use the mark RITZ as part of RCHC’s RITZ-CARLTON mark, in connection with certain defined “services” and within “The Territory”. The services as defined in the Agreement included hotel services and reservation services provided by RCHC under its RITZ-CARLTON mark “in The Territory”. The extracts provided to the Panel do not include a definition of “The Territory”, but in the body of the Supplementary Complaint the Complainant refers to the licence as a “worldwide licence agreement”.
In support of its Complaint, the Complainant has produced a letter from RCHC dated March 3, 2005, in which RCHC “confirms that it has not authorized the registrant of [the Domain Name] to use the mark RITZ in this domain name or on this website, or in any other manner.”
The Complainant’s Domain Names
The Complainant owns a number of “ritz” domain names. These include <ritz.com>, <ritz.paris.com>, <ritz.org>, <ritz.net>, and <ritz.biz>.
The Respondent and the Domain Name
The Respondent registered the Domain Name on February 1, 2004, and according to the Response, he has used the Domain Name continuously since then as a link to his “well-known and well-used travel website” at “www.cheaprooms.com” (“the Website”). Documents attached to the Complaint confirm that the Domain Name resolves to a page at the Website.
The Website offers a booking service for hotel reservations, and various other travel services. All of the pages of the Website appear to feature the prominent heading “CheapRooms.com”. Immediately below that heading appear the words “Where are you?”, followed by a number of country icons (flags) on which the browser can click – e.g. USA, UK, Germany, France.
Immediately below the country icons, the browser can make his or her selection from the various services available on the Website, by clicking on the appropriate link to the desired page of the Website. The pages are “Home.Hotels.Flights.Cars.Vacation Rentals.Hot Deals.Customer Service”.
North American and European toll-free telephone numbers are provided immediately to the left of the “Cheaprooms.com” heading, and to the right of that heading the following appears:
“Lowest Price Guarantee
and
Up to $100 Rebates!”
There is a page on the Website dealing specifically with “Ritz” hotels. This is the page to which the Domain Name directly resolves. Immediately underneath the standard header described above, the “Ritz” page provides the following:
“RitzHotel.com
powered by CheapRooms.com
Choose from our selection of Ritz hotels”
Below that there are links to “Ritz” hotels in various cities, including Paris, London, Rome, Boston, and Singapore. In all, the Website provides links to webpages featuring ten different “Ritz” hotels (including the “Ritz Hotel Paris”). Underneath the links to these various Ritz hotels, there is an invitation which reads:
“Didn’t find your hotel? Check CheapRooms.com Hotel Reservations page for our complete booking service”.
On a subpage dealing specifically with the Hotel, there appears the name of the Hotel, with rates shown as ranging between $629.51 and $5,020.82 per night. The following words also appear on a webpage featuring the Hotel:
“THIS MEMBER OF – THE LEADING HOTELS OF THE WORLD – IS A UNIQUE PROPERTY, A STATE OF THE ART, COMBINING PERFECTLY THE OLD WORLD TRADITION WITH MODERN LUXURY AND COMFORT. BUILT IN THE EARLY 18TH CENTURY AS A PRIVATE HOME, THE RITZ HOTEL WAS INAUGURATED 1ST JUNE 1898, AND SINCE THEN HAS BEEN PERPETUATING A TRADITION ON HOSPITALITY AND GASTRONOMY OF THE HIGHEST QUALITY.”
The Respondent acknowledges in his Response that a number of the hotels featured on the Website cannot be described as providers of “cheap rooms”. He says that the Website “does not deal exclusively with inexpensive accommodation”.
Generally, the Respondent says in the Response that he is in the business of registering and utilizing domain names primarily of a generic travel nature. He says that the website is one of the most popular websites worldwide in providing travel and hotel accommodation at the best hotels in the world. The Respondent says that, over the years, he has registered hundreds of travel-related domain names, including <flight.com>, <traveling.com>, <skivacations.com>, <beachvacations.com>, and <beachhotels.com>, to name but some.
5. Parties’ Contentions
A. Complainant
1. The Domain Name incorporates the Complainant’s registered mark RITZ, and is similar to that mark. The word “hotel” is merely descriptive of the Respondent’s business.
2. The combination of the Complainant’s mark and a generic term such as “hotel” is likely to create confusion. It is likely that Internet users familiar with Ritz hotels believe that the Domain Name is connected to hotel services offered by the Complainant, or someone endorsed by or affiliated with the Complainant (referring to ACOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517 <ibishotels.com>, Marriott International, Inc. v. Thomas, Burstein and Miller, WIPO Case No. D2000-0610 <marriottreward.com>, and The Hotel Ritz, Limited v. Kim Min-Kouk, WIPO Case No. D2004-0154 <weddingritz.com>. In all of these cases the at-issue domain names were held to be confusingly similar to the complainant’s trademarks.)
3. The Respondent uses the notoriety and tremendous reputation of the Complainant’s RITZ mark to promote his services related to hotel room reservations, thereby implying an endorsement by the Complainant of his services. The Respondent is neither a licensee of the Complainant, nor authorised by the Complainant to use the Complainant’s famous trademarks RITZ and HOTEL RITZ. In those circumstances, the Respondent cannot allege that he has any legitimate interest in the word “Ritz”.
4. The Respondent has registered, and is using, the Domain Name in bad faith, for the following reasons:
(a) The Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s RITZ mark, as to the source, sponsorship, affiliation, or endorsement of the Website (relying on paragraph 4(b)(iv) of the Policy).
(b) The fact that the Domain Name points to a website which prominently features the expression “cheap rooms”, coupled with the fact that the Website displays the statement “RitzHotel.com powered by Cheaprooms.com”, directly associates the Hotel with the rental of cheap rooms. The Hotel is famous for its luxury and exclusivity, and the association of the Hotel with the rental of cheap rooms tarnishes the image and reputation of the Hotel.
(c) The Website implies that the Hotel is part of a hotel chain, whereas the Hotel is a unique entity. The implication that the Hotel is part of a chain dilutes the value of the Hotel’s name and the RITZ mark.
(d) The trademark RITZ is sufficiently famous internationally that the Respondent cannot argue that he was unaware of the Complainant’s trademark rights when he registered the Domain Name.
(e) There is no objective reason for the registration of the Domain Name, other than the capture of the Complainant’s reputation and goodwill. The RITZ mark is known for elegance and luxury. The Respondent has used the Complainant’s mark in the Domain Name with a view to attracting the attention of an on-line audience in search of selective and luxury services.
B. Respondent
1. The Complainant’s United States-registered trademarks are not for use as a hotel. The only United States registered trademarks for a “Ritz” hotel, are owned by RCHC and by WB Johnson Properties Inc.
2. The word “Ritz” is trademarked in the United States for a number of different uses, which further dilutes the Complainant’s trademarks. There are registered RITZ marks for cleaning and polishing cloths, bakery products, rouge and cosmetic skin creams, instrument transformers, aprons, soft drinks containing carbonated water, and numerous other products.
3. The word “hotel” in Ritz-Hotel.com is not merely descriptive, but rather an integral part of the Domain Name and the Website. “Ritz Hotel” is not a registered trademark of the Complainant. Its registration is just for the word “Ritz”, which has no exclusivity or famous identity solely connected with the Hotel.
4. The Respondent neither registered nor is using the Domain Name in bad faith. Over the years, the Respondent has registered hundreds of travel-related domains. The Respondent therefore has a legitimate business interest to register and use the Domain Name. Although the word “Ritz” is certainly famous, unless one is from Paris the Hotel is hardly the first hotel that comes to mind worldwide when the name “Ritz Hotel” is mentioned.
5. In Six Continents Hotels, Inc. v. Larry Goodwyn d/b/a Hoteldiscounters, WIPO Case No. D2003-0208, the Complainant contended that the domain name <cheap-holiday-inn-hotels-accommodation.com> was confusingly similar to the Complainant’s registered HOLIDAY INN mark. The panel in that case found that the Complainant had not proved that the descriptive phrase comprising the domain name was “identical or confusingly similar to” the Complainant’s HOLIDAY INN mark. The panel also stated “Complainant asserts that bad faith is inferable from the fact that the HotelDiscounters.com website offers various third-party-branded-hotel services, not merely HOLIDAY INN services. In the Panel’s view, this fact tends to weaken rather than strengthen, the Complainant’s argument. That Respondent offers, under the descriptive trade name HotelDiscounters.com, hotel services offered by various third parties in addition to HOLIDAY INN franchisees, tends to reinforce the already clear implication that Respondent is an independent broker not affiliated with any particular hotel brand.” In this case, the Respondent similarly offers hotel services offered by various third parties, all with the name “Ritz”. The Complainant’s claim that the Respondent does not have a legitimate business interest in the Domain Name must fail.
6. The Respondent was operating the Website for his travel domains long before he received notice of the present dispute from the Complainant. The Respondent therefore has a legitimate interest in the Domain Name (citing Hola S.A. and Hello Limited v. Idealab, WIPO Case No. D2002-0089, Adaptive Molecular Technologies, Inc. v. Priscilla Woodward and Charles R.. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 and Telaxis Communications Corp. v. William E Minkle, WIPO Case No. D2000-0005).
7. There is no evidence that the Respondent registered the Domain Name for the purpose of disrupting the business of a competitor. Nor can the Complainant show that the Respondent intentionally attempted to create a likelihood of confusion with the Complainant’s mark (citing Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046 and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).
6. Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Domain Name 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.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) before any notice to the respondent of the dispute, use by the respondent 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) where the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) where the respondent 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.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proved this part of the Complaint. It is the registered proprietor of the word mark RITZ in France and in numerous other countries, in respect of the provision of hotel and other temporary accommodation, and in respect of reservation services for hotels (together with a number of other services in International Class 42). The Complainant therefore has rights in the RITZ service mark, and the question is whether the Domain Name is confusingly similar to that service mark.
The Panel has no doubt that it is. First, the Domain Name incorporates the RITZ mark in its entirety. Numerous WIPO panels have found that a domain name that wholly incorporates the complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy – see, for example, Nokia Group v. Mr Giannattasio Mario, WIPO Case No. D2002-0782, and the decisions referred to at pp 4 to 5 of the decision in that case. There may be some cases where a domain name which incorporates in full another party’s registered trademark will not be confusingly similar to that trademark because sufficient additional letters or numbers have been added to the registered mark to remove any confusion. That is not the position here. The distinctive part of the Domain Name is the word “RITZ” – the hyphen, the “.com”, and the word “hotel”, are all either generic or descriptive.
Indeed, the addition of the word “hotel” tends, if anything, to increase the likelihood of confusion, because the word is descriptive of the business operated by the Complainant under the RITZ mark: see in that regard ACOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517 (the case referred to by the Complainant dealing with the domain name <ibishotels.com>). The panel in that case said: “The addition of this word “hotels” does not serve to distinguish the Domain Name from the Complainant’s well known mark, but indeed compounds the likelihood of confusion between the Domain Name and the Complainant’s trademark” (which was the mark IBIS registered in respect of hotels and restaurants). See also Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677, where the panel said: “The domain name at stake is made up of the combined words composing the trademark of the Complainant followed by the descriptive addition “magazine”. This descriptive term actually refers directly to the original and main object identified by the trademark, i.e. the Marie Claire magazine. Instead of being a mere addition without significance from the perspective of this comparison, this addition reinforces the likelihood of confusion with the trademark held by the Complainant.”
For the foregoing reasons, the Panel has no difficulty in concluding that the Domain Name is confusingly similar to the RITZ mark in which the Complainant has rights.
For completeness, we should add that we reject the Respondent’s submission that the word “Ritz” is descriptive or generic, and so not entitled to protection under the Policy. First, the Complainant has proved that it is the registered proprietor of the mark RITZ, for various goods and services, in numerous countries. It is not for the Panel in an administrative proceeding such as this to question the validity of those registrations. Secondly, the Panel is not satisfied that the noun “Ritz”, when used in respect of a hotel, is descriptive or generic, as the Respondent contends. The fact that the fame of the Hotel has given rise to the adjective “ritzy”, and the expression “putting on the ritz”, does not mean that the noun “Ritz” is no longer distinctive of the services for which the Complainant has the RITZ mark registered, in the particular jurisdictions in which it is registered.
The fact that others have registered the RITZ mark in other jurisdictions, or for different goods or services, is not relevant under Paragraph 4(a)(i) of the Policy. Trademarks and service marks are territorial, and the fact that the Complainant is the registered proprietor of the mark RITZ in at least one jurisdiction is sufficient for it to satisfy the requirement of paragraph 4(a)(i) of the Policy that it have a “right” in that mark.
B. Rights or Legitimate Interests
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show by concrete evidence that he does have a right or a legitimate interest in the Domain Name (there are numerous WIPO decisions where that approach has been adopted; for an example, see the decision of the three-member panel in Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, citing Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624).
In this case, the Complainant has not authorised the Respondent to use the RITZ mark, whether in the Domain Name or otherwise, and the Panel has found that the Domain Name is confusingly similar to the RITZ mark in which the Complainant has rights. In those circumstances it is for the Respondent to prove that he has some right or legitimate interest in the Domain Name, either under one of the subparagraphs of Paragraph 4(c) of the Policy or on some other ground. That will necessarily involve the Respondent putting forward a plausible explanation for his choice of the Domain Name.
The Panel is of the view that the Respondent has not advanced any plausible case that he enjoys a right or legitimate interest in the Domain Name. The Panel has come to that view for the following reasons:
1. There is no question of the Respondent having been commonly known by the Domain Name. Paragraph 4(c)(ii) of the Policy therefore has no application.
2. In the Panel’s view, the Respondent’s use of the Domain Name has not been bona fide, or fair, and he is therefore unable to establish a right or legitimate interest in the Domain Name under either of subparagraphs 4(c)(i) or 4(c)(iii) of the Policy. The Panel’s reasons for that view are as follows:
(a) The Domain Name wholly incorporates the Complainant’s mark and is confusingly similar to that mark. The addition of the word “hotel” serves only to exacerbate the likelihood of confusion, and the use of the singular “hotel” in the Domain Name tends to suggest that any website at the Domain Name will be concerned with just one “Ritz” hotel. The renown of the Hotel over approximately 100 years is such that the Panel is prepared to infer that a significant number of Internet users around the world would be likely to assume (reasonably) that the one hotel was the Hotel.
(b) The Respondent is clearly very experienced in the travel industry, and would have been well aware of the Complainant and the RITZ mark.
(c) In a number of countries, the Complainant is the registered proprietor of the mark RITZ not only in respect of the provision of hotel accommodation, but also in respect of the provision of hotel reservation services. Generally in those jurisdictions, it will be entitled to exclusive rights to the use of the RITZ mark in respect of the provision of those services. The Respondent is using the Domain Name in connection with the provision of precisely the same services. It is beyond the scope of an administrative proceeding such as this to address possible questions of trademark infringement – that would involve considering questions as to whether or not the Domain Name is being used in a trademark sense, and whether or not the use of the Domain Name is likely to cause confusion or deception. Findings on such matters would require more evidence than is available to the Panel in a proceeding such as this, and such findings are not in any event necessary to the Panel’s decision. It is sufficient to note that the Respondent has chosen to use the Domain Name in connection with the provision of services which are identical to the services for which the Complainant holds RITZ registrations in a number of jurisdictions.
(d) The Domain Name points to a page at the Website dealing with “Ritz” hotels. The Panel accepts the Complainant’s submission that the Website creates the impression that these “Ritz” hotels are part of a chain, or that they are at least affiliated with each other or connected to each other in some way. The grouping of the “Ritz” hotels on one page, and the statement describing the Hotel as a “member” of “the leading hotels of the world”, do seem to be designed to encourage the impression that the Hotel is part of, or somehow affiliated to, a “Ritz” group or chain. The evidence clearly shows that that is not so. The Ritz London and Ritz Madrid hotels are unrelated to the Hotel, and so are the various “Ritz” hotels operated by RCHC. Yet for reasons which are not explained, the Respondent has chosen to group the 10 (unrelated) Ritz hotels together on the one web page. There is no evidence that the Ritz London, the Ritz Madrid, the various “Ritz” hotels operated by RCHC, and the Hotel share any common characteristics which would distinguish the group from other, “non-Ritz”, luxury hotels.
(e) The Respondent is clearly an experienced operator in the travel industry, and the Panel infers that he would have been well aware that the Hotel is not connected or related to the various other “Ritz” hotels featured on the “Ritz” page of the Website. Certainly, he has not suggested in his Response that he was unaware of that fact.
(f) The Respondent’s Response, and the Supplementary Response, provide no plausible explanation for either the Respondent’s choice of the Domain Name or his decision to group together on the Website 10 hotels (at least some of which have no connection with the others) solely on the basis that they happen to share the name “Ritz”. The Respondent appears to be suggesting that the word “ritz” is merely a descriptive word, which is similar to the various other travel-related domains which he has registered – <flight.com>, <cheaphotels.com>, <traveling.com>, <lisbonhotels.com>, <bahamashotels.com>, <sunvacations.com>, <skivacations.com>, <beachvacations.com> and <beachhotels.com> – which are clearly descriptive of the services one would expect to find provided through websites at those domains. But the Domain Name in this case is in quite a different category. It incorporates a service mark which trademark authorities in numerous countries have held is distinctive of the Complainant’s services provided under the mark. As we have said under the “Identical or Confusingly Similar” heading above, the Panel does not accept that the word “Ritz” has become a mere dictionary word, in respect of which no-one can enjoy trademark rights. Nor does it follow that, because other traders have registered RITZ in different jurisdictions, or for different goods or services, everyone has a legitimate interest in using “Ritz” as a domain name (or as the dominant part of a domain name).
(g) After referring to the Six Continents Hotels, Inc. case, the Respondent submitted: “Similarly, Respondent offers under the website cheaprooms.com, hotel services offered by various third parties all with the name Ritz. Complainant’s claim that Respondent does not have a legitimate business interest in the domain must fail.” The Panel does not find it plausible that the Respondent would choose to market, as a group, the services of unrelated hotels in different countries who share only the business name “Ritz”. There is no evidence to support the existence of some segment in the hotel industry which is designated or referred to by the use of the expression “Ritz”, nor any evidence of any international group of consumers of hotel services that always seeks out hotels that happen to be called “The Ritz” (regardless of location or ownership). There is no evidence that hotels in different cities which share the name “Ritz” provide uniform or even similar services (as might be expected of a chain, or franchised, operation).
(h) The Respondent says that the Website does not deal exclusively with inexpensive accommodations. And yet the Website prominently features the expression “cheap rooms”, and the “Lowest Price Guarantee” and “Up to $100 Rebates!” claims, even on the page dealing with the (more expensive) “Ritz” hotels. There is no obvious legitimate commercial explanation why someone who genuinely wanted to market elegant, superior and very expensive hotel accommodation, would do so through a website called “www.cheaprooms.com”, and include prominently the “lowest price guaranteed” and “$100 rebates” statements.
(i) The Domain Name was registered in February 2004, and the Respondent says that he has used it continuously since then as a link to the “well-known and well-used” Website. If the Respondent’s reason for selecting the Domain Name was genuinely to market hotels bearing the name “Ritz”, including the Hotel, one might have expected the Respondent to produce some evidence of bookings at the Hotel made by him through the Website over the period of approximately 22 months between February 2004 and the date of the Response. The Respondent has not provided any such evidence.
(j) In the absence of any plausible reasons from the Respondent for his decisions to market a group of unrelated hotels in different countries simply because they happen to share the name “Ritz”, and to register the Domain Name, the Panel infers that the Complainant is probably correct when it submits (in the Supplementary Complaint) that “use by the Respondent of the mark RITZ was thus meant to attract the attention of an online audience in search of selective luxury services, and unduly take advantage of the high notoriety and reputation attained by the mark RITZ in the hotel industry.” Such Internet users, arriving at the “Ritz” subpage of the Website, are immediately exposed to the Respondent’s advertising of its cheap rooms in other hotels, and provided with a convenient opportunity to search for such alternative accommodation. But if that was the Respondent’s real intention, the Panel is of the view that he could not have been acting bona fide.
(k) In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel addressed the “difficult question of whether an authorised sales or service agent of trademarked goods can use the trademark at issue in its domain name”. The panel held that, for a respondent’s offering of goods or services to be bona fide in such circumstances, the offering must meet several requirements. One of those requirements is that the respondent must use the site to sell only the trademarked goods. The panel in Oki Data Americas, Inc. went on to say: “otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon Inc v. Technilab; WIPO Case No. D2000-1774 … (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J W Roberts Co; CPR Case No. 0109… (bait and switch is not legitimate).” The “bona fide use” requirement has been followed by a number of other WIPO panels. See for example the decision of the three-member WIPO panel in Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095. Other cases to similar effect include Motorola, Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, and Dr. Ing. h.c.F. Porsche AG v. Dell Fabbro Laurent, WIPO Case No. D2004-0481.
(l) The Respondent placed some reliance on the WIPO panel decision in Six Continent Hotels, Inc. The complainant in that case was the franchisor of more than 2,900 hotels, in more than 70 countries, operating under the HOLIDAY INN mark. The respondent operated an Internet website, offering a global reservations network providing cheap and budget hotel accommodation worldwide, through a website at “www.cheap-holiday-inn-hotels-accomodation.com”. As in the present case, visitors to the website could place online reservations with HOLIDAY INN, and other well- known hotel brands, allegedly at the lowest rates available. There was no dispute that the respondent was a legitimate reseller of hotel services provided by, among others, authorised Holiday Inn franchisees. In the circumstances of the case, the panel held that the respondent was using the expression “holiday inn” to identify the true origin of hotel services that the respondent was actually and legitimately offering for sale as an independent broker, and that that was sufficient to establish a legitimate interest in the domain name.
(m) While the Six Continents Hotels, Inc. has some similarities to the present case, there are important differences. First, it appears that a number of HOLIDAY INN franchisees were voluntarily advertising their hotels through the respondent’s website. That is not the position here, where the Complainant has made it clear that it has not participated in the advertisement of the Hotel on the Website. (In Six Continents Hotels, Inc. the panel said: “But if genuine HOLIDAY INN hotels are in fact offering cheap rates and advertising those rates via Respondent’s website, and if a presentation of this fact attracts visitors, such “diversion” is not the result of “confusion” and does not constitute evidence of “bad faith” conduct on behalf of Respondent”.) Secondly, the panel in Six Continents Hotels, Inc. noted that there was no evidence that anyone, intending to go to the complainant’s website, would likely do so by typing in “cheap-holiday-inn-hotels-accomodation.com”. That is not the position in this case, where there is a significant likelihood that someone looking for a website of the Complainant might type in the Domain Name.
(n) Those factors, which go to the bona fides of the respondent in each case, are sufficient to distinguish the Six Continents Hotels, Inc. case from the present case. However, to the extent that Six Continents Hotels, Inc. might suggest that a reseller of trademarked products may establish bona fide use of a domain name incorporating the trademark by simply showing that it includes sales of the genuine trademarked product at its website (along with other, competing products), the Panel respectfully declines to follow the decision in Six Continents Hotels, Inc. Oki Data Americas, Inc, and the cases which have followed it, say that, to establish a record of bona fide use of the domain name, the reseller must show that it has been selling only the trademarked goods, and has not also been selling competitors’ products. While there may be some room for argument, in a particular case, that infrequent or incidental sales of competitors’ products should not result in a finding of lack of bona fides on the part of the reseller, that is not an argument we have to address here. In this case there is no suggestion that the Domain Name was registered primarily with a view to reselling the Complainant’s hotel services. The Hotel is just one of many hotels at which rooms can be booked through the Website, and some of those other hotels will be the Hotel’s competitors. There is no basis for the Panel to conclude that sales to those competitors will be only infrequent, or incidental.
(o) For all the foregoing reasons, the Panel is of the view that the Respondent has failed to establish that, before any notice to him of the present dispute, he had been using the Domain Name in connection with a bona fide offering of goods or services. For the same reasons, the Panel concludes that the Respondent has failed to prove that his use of the Domain Name has been fair. The Respondent has therefore failed to establish that his use of the Domain Name falls within any of the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy. There being no other reasonable basis for the Panel to find that the Respondent has a right or legitimate interest in the Domain Name, this part of the Complaint has been satisfactorily proved by the Complainant.
C. Registered and Used in Bad Faith
Substantially for the reasons set out above under the heading “Rights or Legitimate Interests”, the Panel finds that the Respondent has registered, and is using, the Domain Name in bad faith.
In the absence of any plausible explanation from the Respondent for (i) his choice of the Domain Name, (ii) his grouping of the 10 “Ritz” hotels on a page at the Website when some have no commercial connection with either the Respondent or others within the group, and (iii) the use of expressions such as “cheap rooms”, “Lowest Price Guaranteed”, and “Up to $100 Rebates!” on a web page featuring the Hotel, the Panel concludes that the Respondent’s real intention was to divert prospective hotel customers from the affluent “top-end” of the market to the Website, and to use the fame of the Hotel and the RITZ mark as the “hook” to achieve that end. The Respondent’s intention was to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s RITZ mark, as to the source, affiliation or endorsement of the Website or of the services offered by the Respondent through the Website. That of course constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
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, <ritz-hotel.com>, be transferred to the Complainant.
Warwick Smith | |
David E. Sorkin |
Clive Duncan Thorne |
Date: January 16, 2006