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Ellerman Investments Limited, The Ritz Hotel Casino Limited, The Ritz Hotel (London) Limited v. Mike Morgan
Case No. D2005-1321
1. The Parties
The Complainants are Ellerman Investments Limited (“First”), The Ritz Hotel Casino Limited (“Second”), The Ritz Hotel (London) Limited (“Third”), London, United Kingdom of Great Britain and Northern Ireland, represented by Ashurst, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mike Morgan, Newfoundland, Canada.
2. The Domain Names and Registrar
The disputed domain names <ritzclublondononline.com>, <ritzclublondonpoker.com>,
<ritzonlinepoker.com>, <thelondonritz.com>, <theritzclublondononline.com>,
<theritzclublondonpoker.com>, <theritzclubpoker.com> are registered
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2005. On December 21, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 22, 2006, eNom 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 December 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2006.
The Center appointed Simon Minahan as the Sole Panelist
in this matter on January 24, 2006. 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,
4. Factual Background
There being no Response filed in answer to the Complaint, the following matters, having been established by uncontroverted evidence of the Complainants, are accepted as fact by the Panel for the purposes of this proceeding.
The first Complainant is a UK registered company with extensive trademark registrations in the UK and around the world variously incorporating the term “Ritz”, “The Ritz Club” and “Ritz London” in a variety of classes including gaming services and hotel and associated hospitality services including the mark “RITZ” registration No. 1509163 for the UK in class 41 gaming services (which is one among 40 international registrations of the RITZ mark in relation to 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. It also has numerous applications for registration of related marks pending.
It is also the owner of the third Complainant company, also UK registered, which owns and operates the Ritz Hotel in London. The third Complainant is also the owner of various trademarks incorporating “RITZ” and “RITZ LONDON” registered in the UK.
Since 1978, the Ritz Club casino has operated at the premises of the Ritz Hotel in London under exclusive licence from the owners of the RITZ trademarks. Since 1998, the second Complainant, a UK company, has conducted the Ritz Club casino operation under an exclusive licence from the first Complainant to use the name in this connection and is 75% owned by the first Complainant.
The Ritz Hotel London enjoys international renown, expends significant sums on promotion and marketing annually and is a famous marks. The Ritz Club casino also enjoys significant domestic and international recognition and is a well-known casino. Since 1998, the second Complainant has also expended millions of pounds annually on promoting and marketing the casino domestically and internationally.
Since September 2002, the Complainants have jointly maintained an on-line gaming service using the domain name <theritzclublondon.com>. The business conducted via the website enjoys substantial patronage and an annual turnover in recent years measuring in the hundreds of millions of pounds sterling.
The Complainants police and protect their respective interests in the RITZ, RITZ CLUB and RITZ LONDON marks by use of professional trademark and domain name registration monitoring services. Apart from detecting the registration of the Domain Names the subject of this proceeding, this monitoring program has not detected any application for trademark registration by the Respondent of the RITZ, RITZ CLUB or RITZ LONDON marks. The Respondent is not affiliated with or licensed by the Complainants.
The Respondent’s use of the Domain names since mid 2005, has been limited to associating them with directory style portal pages carrying links to other websites offering hotel, travel and gaming services unrelated to the Complainant’s and not conducted by reference to the subject marks. Some of the linked enterprises are direct competitors to the Complainants.
The Respondent has been the subject of previous complaints
under the UDRP which have resulted in transfer and at the time of filing of
the Complaint was the registered holder of some 294 domain names registered
in the “.co.uk” domain level.
5. Parties’ Contentions
The Complainants seek transfer of the Domain Names to the first Complainant.
The Complainants contend that the RITZ, RITZ CLUB and RITZ LONDON marks are a famous or at least extensively recognized internationally and enjoy substantial goodwill and reputation in connection with hotel and gaming services, including on-line gaming.
They contend that each of the Domains is either identical or confusingly similar to one or some of their RITZ, RITZ CLUB and RITZ LONDON marks and that the use of the Domain Names by the Respondent in connection with on-line gaming services and hotels will inevitably cause confusion in consumers as to possible connection between the Respondent, the Complainants and their businesses and unrelated businesses promoted by way of the Domain Names.
They further contend that in view of:
(a) his lack of affiliation with and /or licence from the Complainants or any of them;
(b) the absence of any formal registration applications relating to the “Ritz”, “Ritz Club” and “Ritz London” by him;
(c) the absence of any positive evidence that he conducts any legitimate business by reference to the RITZ, RITZ CLUB and RITZ LONDON marks;
(d) the evidence of the use being made of the Domain Names to attract and divert customers to similar services conducted by unrelated and sometimes competing entities,
it is to be inferred that the Respondent has no legitimate interests in any of the Domain Names.
As to bad faith registration and use of the Domain Names the Complainants contend:
(a) in view of the fame of the RITZ, RITZ CLUB and
RITZ LONDON marks the Respondent was aware or should have been aware of the
Complainant’s rights in the mark and that the registration in light of
this constitutes bad faith (citing SportSoft Golf Inc v. Hale Irwin’s
Golfer Passport, NAF Case FA94956, Marriott International Inc. v. John
Marriott, NAF Case FA94737; E. &J. Gallo Winery v. Oak Investment
Group, WIPO Case No. D2000-1213 (November 22, 2000));
(b) in view of the fame of the “Ritz”, “Ritz Club” and “Ritz London” there is (and, inferentially, could not at the time of registration have been) any legitimate user of the marks in respect of either hotel or gaming services other than the Complainants;
(c) in the absence of explanation of the selection
of the Domain Names, intent to register use in bad faith may be inferred (citing
the <buyguerlain.com>, Guerlain S.A. v. H I Investments,
WIPO Case No. D2000-0494 (August 1, 2000));
(d) the use of the Domain Names as set out above is a commercial use intended to illegitimately exploit the Complainant’s goodwill;
(e) the history of UDRP complaint against the Respondent and the record showing numerous registrations in the “.co.uk” ccTLD including some domain names incorporating well known marks such as “<mattell.co.uk”> taken with the foregoing contentions, establish that the Respondent has registered the domain names in order to prevent the Complainant’s from so doing and further, that there is a pattern of the Respondent engaging in such conduct.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
The Panel finds that the first Complainant has a trade and/or service mark interest in each of the “RITZ”, “RITZ CLUB” and “RITZ LONDON” marks.
6.1 Paragraph 4(a) of the Policy states that the Complainants must prove each of the following requirements:
(i) that each of the Domain Names registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of each of the Domain Names the subject of complaint; and
(iii) that each of the Domain Names has been registered and is being used in bad faith.
The Panel’s consideration and findings on these elements follow:
A. Identical or Confusingly Similar
The Panel finds each of the Domain Names is confusingly similar to the RITZ
trademarks. “”The Panel notes previous UDRP decisions supporting
this conclusion including NM Rothschild & Sons Ltd. v. Fine Art Investments
Ltd. /Roger Stiles, WIPO Case No. D2001-1029
(October 1, 2001) and Teradyne, Inc. v Michael Boyd, WIPO
Case No. D2000-0026 (May 10, 2000) and The Chancellor, Masters and Scholars
of the University of Oxford v. DR Seagle, WIPO
Case No. D2001-0746 (August 14, 2001).
The Panel accepts the RITZ mark is internationally famous, at least in relation
to the conduct of hotels. While not primarily relying on the fame of the mark
the Panel is sustained in its conclusion as to confusing similarity by this
fame. It may readily be accepted that the RITZ mark used in conjunction with
an offering relating to hotels, travel or gaming evokes the Complainant’s
undertakings in consumer’s minds. In this respect the Panel has had regard
to UDRP decisions such as: AT&T Corp. v. RaveClub Berlin, WIPO
Case No. D2002-0666 (September 5, 2002); Telstra Corp. Ltd. v. 11/Shinpyo
Kang, WIPO Case No. D2001-0623 (July 17, 2001);
and Pivotal Corp. v. Discovery Street Trading Co. Ltd., WIPO
Case No. D2000-0648 (August 17, 2000).
Finally the Panel observes that, even disregarding the use to connection in
which the Domain Names are used, the incorporation of the “Ritz“
term in the circumstances is sufficient to satisfy the initial interest confusion
test as expounded in the Ticketmaster cases. (See eg: Ticketmaster Corp.
v. Iskra Service, WIPO Case No. D2002-0165
(April 8, 2002); Ticketmaster Corp. v. Polanski, WIPO
Case No. D2002-0166 (April 8, 2002); Ticketmaster Corp. v. Dotsan,
WIPO Case No. D2002-0167 (April 8, 2002)).
In addition the Panel finds that the each of the following Domain Names:
is confusingly similar to the RITZ LONDON mark by the incorporation of those words in the Domain Names and absence of any distinguishing verbal component which might disclaim a connection with the Complainants.
Neither the inclusion of the term “poker”, which designates one
of the principal products associated with the Complainants’ physical and
virtual casino activities, nor the term” “on-line” which is
merely descriptive of the fact that that is the province of the Domain Name
and moreover might be taken to allude to the third Complainant’s internet
gaming services, serve to distinguish the Domain Names nor break the association
of the terms Ritz London with the first Complainant’s marks; see eg: America
Online Inc v. Yeteck Communication Inc., WIPO
Case No. D2001-0055 (April 30, 2001).
Neither does the mere inversion of the words Ritz London in the Domain Name
<thelondonritz.com>, serve to distinguish or abate the confusing similarity
and indeed, (see eg: Cancer Treatment Centers of America Inc. (CTCA) v. Henry
Chan, WIPO Case No. D2003-0611 (September 18, 2003)).
Finally, for completeness, the Panel finds each of the following Domain Names, is confusingly similar to the “RITZ CLUB” mark for reasons outlined immediately above:
The Panel finds that the first element of the Policy has been met.
B. Rights or Legitimate Interests
There is no evidence of the Respondent having any common law or registered trademark interests which would amount to a right for the purposes of the Policy. Neither is there any evidence of any bona fide use or offering of goods on the site prior to notice of the Complainant’s claim as contemplated by paragraph 4(c)(i) of the Policy.
The Panel notes the tension
inherent in the wording of paragraphs 4(a)(ii) and 4(c) of the Policy concerning
the onus on the Complainant to establish the want of such right or interest
in the Respondent and the difficulties of proving a negative that this entails
where a Respondent is silent. In this regard the Panel has had reference to
and assistance from the discussion in Ellerman Investments Limited
and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO
Case No. D2001-1461 (March 9, 2002) and the UDRP cases referred to there.
This Panel considers that the Complainant has by evidence and inference raised
a prima facie case that the Respondent has no legitimate interest in
the Domain Names, particularly in view of the fame of the RITZ mark and that,
the Respondent having omitted to controvert or rebut that evidence, the Panel
is justified in finding as it does.
The Panel concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Panel finds that the
Respondent’s use of each of the Domain Names is commercial. The Respondent
in each case is patently seeking to trade upon the Complainant’s goodwill
and/or divert the Complainants’ consumers or potential consumers by confusion
of association with the Complainant. (See eg Microsoft v. MSNetworks, WIPO
Case No. D2002-0647 (October 1, 2002); Costco wholesale Membership Inc.
and Costco Wholesale Corporation v. Henry Chan, WIPO
Case No. D2004-0218 (May 18, 2004)).
As such, in accordance with paragraph 4(c) of the Policy, it holds that the use of the domain names is in bad faith.
Moreover the Panel finds that each of the Domain Names was initially registered with the intent and purpose of being so used in circumstances. This finding is made by inference from the fact of the use to which the domain names have been put and the finding that the Respondent had no legitimate interest in the domain name. The Panel accepts the Complainants’ contentions in this regard and has had regard to the authorities referred to by the Complainants and cited above in connection with their contentions.
For the record, the Panel does not accept the Complainants’ contention that the circumstances justify a finding of bad faith registration and use on the ground that the Respondent intended to prevent the Complainant from registering and an established pattern of such conduct. It does not find that the established facts go so far as to make out this intent. Rather the intent seems to plainly be to free-ride on the Complainant’s renown.
However, the Panel does accept that the Respondent’s history of registration
and use contravening the Policy, the extensive UK ccTLD domain names currently
registered to him in which he seems to have no apparent legitimate interest
or rights and his failure to respond or justify his conduct also support an
inference that the Respondent registered the domain names and used them in bad
faith (See eg: Armstrong Holdings Inc v. JAZ Association, NAF Case No. FA
95234 (Nat. Arb. Forum August 17, 2000).
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 names:
be transferred to the first Complainant Ellerman Investments Limited.
Simon J. Minahan
Dated: February 11, 2006