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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Al Cleary

Case No. D2003-0362

 

1. The Parties

The Complainants are Ellerman Investments Limited ("Ellerman"), a private company with limited liability incorporated under the laws of England and having its principal place of business in England and the Ritz Hotel Casino Limited ("Ritz"), which also is a private company with limited liability, incorporated under the laws of England, with its principal place of business in England.

The Respondent is Al Cleary, of Archbald, Pennsylvania, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <ritzcasinoclub.com> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 12, 2003. On May 12, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On May 12, 2003, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2003.

The Center appointed Edward C. Chiasson, Q.C. as the sole panelist in this matter on June 24, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Because the material filed by the Complainants referred to correspondence from the Respondent that was not included in the file delivered to the Administrative Panel, it requested, received and has considered a May 12, 2003, letter from the Respondent to the Center.

An examination of the material confirms that all technical requirements for the prosecution of this proceeding were met.

 

4. Factual Background

The following information derives from the Complaint.

The Complainant Ritz is the exclusive licensee of the Complainant Ellerman’s rights in certain "Ritz" trademarks for the provision of gaming services at the Ritz Casino. The latter owns 75% of the shares of the former.

The trademark RITZ is a famous mark for gaming services. The Complainant Ellerman is the owner of The Ritz Hotel (London) Limited ("Ritz London"), the company that owns and runs the Ritz Hotel in London. The hotel also has a world renowned casino in its former ballroom. The Complainant Ritz uses Ritz Trademarks (amongst others) for the provision of gaming services at the casino located in the former ballroom of the Ritz hotel known as the Ritz Club or Ritz Casino (the "Ritz Casino").

The Complainant Ellerman is the proprietor of a large portfolio of registered trademarks incorporating the marks THE RITZ CLUB, RITZ and RITZ CASINO (the "Ritz Trademarks").

The Complainant Ellerman has trademark registrations for the mark RITZ CASINO for gaming in the countries set out below.

Mark	Registration no.	Country	Class	Services	Date
RITZ CASINO	2214368	UK	41	Gaming services	15/11/99
RITZ CASINO logo	2214369	UK	41	Gaming services	15/11/99
RITZ CASINO	7891	Jersey	41	Gaming services	04/09/00
RITZ CASINO	1883	British Virgin Islands	41	Gaming services	15/02/01
RITZ CASINO logo	1882	British Virgin Islands	41	Gaming services	15/02/01

The Ritz Casino is variously referred to by its members and by members of the public as the "Ritz Club" and the "Ritz Casino."

The Complainant Ellerman has trademark registrations for the words RITZ CLUB in class 41 for gaming in the following countries:

Mark	Registration no.	Country	Class	Services	Date
THE RITZ CLUB	2206186	UK	41	Gaming services	18/08/99
RITZ CLUB logo	2206189	UK	41	Gaming services	18/08/99
THE RITZ CLUB	7890	Jersey	41	Gaming services	04/09/00

The Complainant Ellerman’s trademark registrations for the word RITZ for gaming services are set out below. (This is not an exhaustive list.)

Mark	Registration no.	Country	Class	Services	Application Date
RITZ	1509163	UK	41	Gaming services	10/08/92
RITZ	7892	Jersey	41	Gaming services	04/09/00
RITZ	1509163	Guernsey	41	Gaming services	04/09/00
RITZ	145173	Israel	41	Gaming services	22/12/00
RITZ	2000/27834	Hong Kong	41	Gaming services	23/12/00
RITZ	465435	Mexico	41	Gaming services	11/01/01
RITZ	1881	British Virgin Islands	41	Gaming services	15/02/01
RITZ	41328	United Arab Emirates	41	Gaming services	26/02/01
RITZ	86735	Lebanon	41	Gaming services	16/03/01
RITZ	77690	Syria	41	Gaming services	17/03/01
RITZ	5827	Antigua & Barbuda	8, 49	Computer software; computer software for gaming and gambling; software for use in the provision of gaming services via the Internet. Games of all kinds and sporting articles not included in other clauses; cards, games articles for use in casinos; parts and fittings for the aforesaid goods.	26/02/01
RITZ	2002-110823	Dominican Republic	41	Gaming services	14/05/02
RITZ	8715	Gibraltar	41	Gaming services	18/06/02

The Complainant Ellerman has many other pending trademark registrations for the trademarks RITZ, THE RITZ CLUB and RITZ CASINO for gaming services throughout the world.

There is substantial goodwill in the RITZ, RITZ CASINO and RITZ CLUB names and trademarks. This goodwill has been generated world-wide as a result of the extensive reputation of the Ritz Casino and the substantial investment which has been made by the Complainants and their predecessors in the marketing and promotion of the Ritz Casino.

The Ritz hotel is one of the most well known hotels in the world. In the last two years approximately 62,000 guests stayed at the Ritz hotel. Approximately 75% of them were international visitors.

The Ritz hotel generated total revenue of Ј17.3 million in 2001 and Ј17.5 million in 2002.

The fame of the Ritz hotel was acknowledged in the book "The World’s Greatest Brands" by Interbrand and edited by Nicholas Kochan. In that book the Ritz hotel is described as "one of the most prestigious hotels in the world" and the "Ritz" brand in the category of leisure and travel is ranked 9^th of the world’s greatest brands.

The Ritz hotel and the Ritz Casino are the subject of several books and songs. The famous song "Puttin’ on the Ritz" by Irving Berlin is about the Ritz hotel in London.

In addition books, such as "The London Ritz – A Social and Architectural History" by Hugh Montgomery-Massingberd and David Watkin, and "The Ritz Hotel London" by Marcus Binney have been written about the Ritz hotel. Many articles in magazines and newspapers have also been written about the Ritz hotel and the Ritz Casino.

There has been a licensed casino operating in the former ballroom of the hotel since 1978. The casino is referred to by its members and members of the public as the "Ritz," the "Ritz Casino" or the "Ritz Club." For the last 23 years it has been one of, if not the premier casino in London, attracting custom from many wealthy and well-known people from all over the world. So far as the Complainants are aware, it is the only casino operating anywhere in the world which is known by the names "Ritz," "Ritz Club" and "Ritz Casino."

The Ritz Casino used to be run by a group of companies led by the parent company London Clubs International plc ("LCI"). LCI opened and ran the Ritz Casino in 1978. The "Ritz" brand then was used under licence from Ritz London and was developed by LCI as its "flagship" brand. This was demonstrated extensively in corporate literature and promotional materials throughout the 20 years of LCI’s involvement in running the Ritz Casino.

When LCI was floated on the London Stock Exchange in 1994, the flotation document stated:

"The Ritz Club has been operating since 1978 in the former ballroom of the Ritz hotel. It is London Clubs’ most exclusive club catering to a small yet high spending international clientele. It is the "flagship" of the Group and an important factor in maintaining London Clubs’ international profile…The Ritz, as illustrated by the results of recent years, is a very successful operation…It is a very upmarket and select club run exclusively for major players."

The importance of the "Ritz" brand to LCI as its flagship casino meant that there was a huge investment in the world-wide promotion and marketing of the brand. The Ritz Casino was the first casino to become involved in international marketing and the many events arranged and/or sponsored by LCI proved to be very successful and received a great deal of publicity.

Between 1990 and 1998, LCI spent the following sums on promotion and marketing of the Ritz Casino in the UK and internationally:

Year	Spend (Ј)
1990	890,469
1991	880,660
1992	873,592
1993	862,680
1994	862,680
1995	893,465
1996	1,046,584
1997	1,105,762
January – July 1998	241,721

This investment by LCI (the majority of which was spent overseas) included the following:

1. sponsorship of sporting events and charity events world-wide including events in the UK, Malaysia, Singapore, Hong Kong, Abu Dhabi and Cyprus; these events have taken place annually for many years; a summary of the sporting events is below; the exposure of the Ritz, Ritz Casino and Ritz Club name as a result of these events has been huge, particularly because of the extensive television, newspaper, and more recently Internet coverage of sporting events;

Years event has been held	Description of event and country
1978-1995	"Ritz Club Charity Trophy" (awarded to top jockey at five top UK race meetings every year).
1978-1995	"Ritz Gold Cup" at Ascot and "Ritz Club Injured Jockey Fund" in UK.
1982-1993	"Ritz Club Golfer of the Year Award" in UK.
1982-1990	"Ritz Club Horse of the Year Award," Malaysia and Singapore.
1988-1990	"Ritz Club Golfer of the Year Award," Malaysia.
1988-1990	"Ritz Club International Polo Invitation Tournament," Malaysia.
1993-1995	"Ritz Trophy Race," Dubai and Abu Dhabi.
1990-1996	"Ritz Club Trophy Stakes," Nicosia, Cyprus.
1994-1995	"Ritz Club Leading Apprentice Jockey Award," Hong Kong.

2. "wining and dining" members and potential members by Customer Relations Officers who are employed by the Complainant Ritz;

3. placement of advertisements and other promotional articles in many magazines, both UK and foreign;

4. through one of LCI’s subsidiaries, Mayfair Maritime Casinos Limited, LCI ran casinos on board a number of prestigious cruise ships owned by Cunard and Celebrity Cruises; these casinos held "Ritz Club" nights on the ships where the casinos onboard were decorated to look like the Ritz Casino in London.

In addition both LCI and the Complainants have produced their own magazines which promote the Ritz Casino. LCI’s magazine "Cachet" was first produced in the early 1980’s and was circulated to all the members of all of LCI’s casinos. The Complainants’ magazine, which was first published in Winter/Spring 2000, is also circulated to Ritz Casino members. The Complainant Ritz carries out various other forms of promotion for the Ritz Casino, including special country themed dinners, sponsorship of sporting events overseas and the provision of gifts to members.

In the summer of 1998, LCI’s lease for the premises at the Ritz expired and LCI transferred its gaming licence to new premises in St James’s Street. When the lease terminated, so did LCI’s licence to use the "Ritz" trademark. The Complainant Ritz took over running the Ritz Casino in 1998. When it did so, the Complainant Ritz continued the promotion of the Ritz Casino world-wide. Since then, the Complainants have continued to expand and develop the very substantial goodwill and reputation in the UK and throughout the world for probity, quality and elegance in the provision of gaming services.

The Complainant Ritz’s expenditures on marketing and promotion of the Ritz Casino since taking over from LCI are as follows:

Year	Spend (Ј)
July-December 1998	958,571
1999	3,471,385
2000	3,271,333
2001	3,630,823
2002	3,792,006

The majority of the marketing and promotional expenditure is directed at foreign nationals, whether existing or potential clients because approximately 98% of the revenue of the Ritz Casino derives from overseas members.

The turnover of the Ritz Casino for the years 1994-2000 was as follows:

Year ending 31 December	Turnover (Ј) - net gaming win
1994	55,569,000
1995	27,219,000
1996	24,935,000
1997	17,204,000
1998	1,252,024
1999	13,132,379
2000	15,531,093
2001	19,622,161
2002	29,114,335

During the financial year to December 31, 2001, the cash drop at the Ritz Casino was in excess of Ј141 million, producing a net gaming win (turnover) exceeding Ј15 million. Drops in other years were of a similar percentage in terms of the ratio of the net win to the overall drop.

Throughout its existence the Ritz Casino has drawn its clientele from all over the world This reputation is not limited to the United Kingdom but extends world-wide. Its world-wide reputation is due to the mobile nature of the clients of the Ritz Casino, the majority of whom are foreigners or frequent travelers from the Far East and the Middle East. As at May 2003, the Ritz Casino had 7891 members, of which only 2347 were British. Members of the Ritz Casino come from 76 different countries (excluding the UK).

Since September 2002, the Complainants have provided, via a related company, gaming services online over the Internet. A website for online gaming services has been launched at the domain name <theritzclublondon.com>, which is owned by the Complainant Ellerman. The domain name <ritzcasino.com>, which also is owned by the Complainant Ellerman, forwards automatically to the "www.theritzclublondon.com" site. This website contains information about the Complainants’ land based casino from which there is a link to the "www.theritzclublondon.com" site.

The Complainant Ellerman’s policy is to protect the reputation attached to the Ritz trademarks by monitoring the registration of trademarks and domain names which contain the word "Ritz" by means of a trademark and domain name watching services. As a result of using these monitoring services, the Complainant Ellerman became aware in approximately January 2003 that the Respondent had registered the subject domain name.

The Complainant Ellerman employs a trademark watching service on the trademark RITZ and never received any notices of any applications for the trademarks RITZ, RITZ CLUB or RITZ CASINO by the Respondent.

As far as the Complainants are aware, the Respondent has no trademark rights in the marks RITZ, RITZ CASINO or RITZ CLUB.

The Complainant Ellerman has not granted the Respondent a licence to use the subject domain name.

The website to which the subject domain name resolves purports to be an online casino portal. It offers visitors the chance to play slot machines at a casino or bingo or sports betting. It claims to have over 600 casinos and sports book operators and to have identified which offer the highest rewards and bonuses for players, although the links on the left hand side of the page are not yet in operation. It also offers an "Affiliate" scheme for Webmasters, whereby Webmasters are paid commissions on players routed through their site.

The Complainants’ authorized representative wrote to the Respondent on March 7, 2003, setting out the Complainants’ rights in the Ritz Trademarks and requesting that the Respondent transfer the subject domain name to the Complainants. No response was received.

The Respondent did not participate formally in this proceeding, but on May 12, 2003, the Respondent wrote to the Center as follows:

"My name is Al Cleary, and I own the Domain Name, "www.ritzcasinoclub.com" and I run The Ritz, a Dinner Theatre and Restaurant in Scranton Pennsylvania. I am relatively new to the Internet so you will have to bear with me for not understanding the procedures or terms associated with a lot of the information in your complaint. If I was not able to use the domain Ritz Casino Club, then why was I able to purchase it from Network Solutions? Doesn’t the fact that we run a business with the name Ritz have any bearing on any of this?

"If the THE RITZ HOTEL CASINO LIMITED, wants to purchase this domain from me I am more then willing to sell it, if they are willing to cover the expenses I have incurred in creating this website, and printing, letterhead, etc. I am not a scam artist trying to make a fast buck. I am a hard working businessman, who right now feels like I am being bullied by big business.

"I am very open to discussion on this matter. I can be contacted by email at helpdesk@ritzcasinoclub.com."

On May 16, 2003, the Complainant responded to the letter with an e-mail attached letter offering to pay the Respondent’s out-of-pocket expenses of registering the subject domain name. No reply has been provided to the Administrative Panel.

 

5. Parties’ Contentions

A. Complainant

The Complainants rely on the registration and use of the words "ritz" and "casino" and state that the subject domain name is confusingly similar.

In support of their contention that the Respondent does not have a legitimate interest in the subject domain name, the Complainants refer to the fact that they have successfully obtained the transfer of a number of domain names using the words "ritz" and "casino." They also note that the Respondent does not have trademark rights to those words and did not have the Complainants’ permission to register the subject domain name. The extensive use and notoriety of the Complainants’ marks is said to support the proposition that no one other than the Complainants can have a legitimate interest in the mark "RITZ CASINO" in the context of gaming.

The notoriety of the Complainants’ marks also is said to support bad faith. Because of that notoriety, the Respondent must have registered the subject domain name to benefit from the Complaints’ reputation by confusing users.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. He notes that he was able to register the subject domain name and that he operates a business which incorporates the word "ritz."

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;

(ii) registration of 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;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting 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 website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainants refer to a number of previous domain name dispute and domestic court decisions. While these are neither controlling nor binding on this Administrative Panel, reference to them often is of assistance.

A. Identical or Confusingly Similar

It is clear that the Complainants have rights to the words "ritz" and "casino." The subject domain name incorporates both. Recognizing that the Complainants’ marks are used in the context of gaming and as associated with the Ritz Club, the subject domain name is confusingly similar to the Complainants’ marks.

The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent operates a business using the word "ritz." As a general proposition, that could be a foundation for the conclusion that he has a legitimate interest in a domain name that incorporates that word. In this case, the subject domain name also includes the words "casino" and "club." There is no apparent connection between them and the Respondent’s business.

In addition, the website to which the subject domain name resolves operates a casino. It has no apparent connection to the business to which the Respondent referred in his May 12, 2003, letter.

The Complainants’ operations and marks are well known, especially in the context of gaming. Without concluding that there never could be another legitimate user of the words "Ritz Casino," in this case the notoriety of the Complainants’s use supports a finding adverse to the Respondent.

The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

A finding that a domain name is confusingly similar to a mark of another does not lead automatically to a conclusion of bad faith, but the facts that the support the finding may be relevant to the bad faith inquiry.

A respondent is not obliged to participate in a domain name dispute, but its failure to do so leaves it open to the inferences that flow logically from assertions made by a complainant that are not obviously unreasonable.

In this case, the Respondent linked his use of the subject domain name to a restaurant business with no obvious connection to gaming. He apparently did not respond to the Complainants’ offer to reimburse him for his costs.

Using the words "ritz" and "casino" in the context of gaming leads to an inference that the user seeks to benefit from the goodwill of the Complainants by confusing potential customers.

The notoriety of the Complainants’ operations also supports an inference of bad faith in the registration of the subject domain name.

The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainants have established their case. They ask that the subject domain name be transferred to the Complainant Ellerman. The Administrative Panel so orders.

 

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Edward C. Chiasson, Q.C.
Sole Panelist

Dated: July 17, 2003