DRS Decision 1192

nz DRS 1192 .nz Dispute Resolution Service

DRS Reference: 1192

The Ritz-Carlton Hotel Company, L.L.C. v Yan Sun

Key words -

Domain name

ritzcarlton.co.nz ritzcarlton.nz

Identical or similar trade mark or name

Registered mark - unregistered mark - well-known mark - identical

Unfair registration

Unfair registration - unfair use - likely to confuse, mislead or deceive - pattern of registration - unfairly disrupting the business of the complainant - blocking registration - respondent having no connection with name or trade mark

1. Parties

Complainant:

The Ritz-Carlton Hotel Company, L.L.C.
10400 Fernwood Road
Bethesda Maryland 20817
United States of America

Represented by: Hamish Selby, Buddle Findlay

Respondent:

Yan Sun
21a Kyle Road,
Albany
Auckland
NZ (NEW ZEALAND)

2. Domain Name/s

ritzcarlton.co.nz
ritzcarlton.nz

3. Procedural history

The Complaint was lodged on 01 September 2016 and Domain Name Commission (DNC), notified the Respondent of the validated Complaint on 02 September 2016. The domains were locked on 02 September 2016, preventing any changes to the record until the conclusion of these proceedings.

No Response was received.

The Complainant paid Domain Name Commission Limited the appropriate fee on 10 October 2016 for a decision of an Expert, pursuant to Paragraph 9 of the .nz Dispute Resolution Service Policy ("the Policy").

Sheana Wheeldon, the undersigned, ("the Expert") confirmed to the DNC on 12 October 2015 that she knew of no reason why she could not properly accept the invitation to act as expert in this case and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.

4. Factual background

The Complainant's rights

4.1 The Complainant is The Ritz-Carlton Hotel Company, L.L.C., of Maryland in the USA. It is described in the Complaint as "world renowned for its luxury hotels, resorts, residential condominium buildings, and related services and products."

4.2 According to the Complaint the Complainant first used the RITZ-CARLTON trade mark for hotel and related services nearly a century ago in relation to the Ritz-Carlton Hotel in Boston. The RITZ-CARLTON mark has been used continuously and extensively in relation to those and other services ever since then. The Complainant currently manages approximately 90 RITZ-CARLTON branded hotels, resorts, and condominium buildings in 30 countries and jurisdictions worldwide, including the United States, Canada, China, Hong Kong, and Singapore. The countries listed in the Complaint do not include New Zealand (or Australia).

4.3 The Complaint goes on to assert that the Complainant sells, advertises and markets its services and the RITZ-CARLTON brand through a variety of channels, including via its website at www.ritzcarlton.com, the Internet, print media, email, social media, newspapers, periodicals and other media and has spent many millions of dollars advertising and promoting goods and services under the RITZ-CARLTON mark. The Complaint makes no reference to any of these activities having taken place in New Zealand, or having been accessible to New Zealanders.

4.4 The RITZ-CARLTON brand is said to have been recognised as one of the top luxury hotel chains in the world, and to be famous throughout the world, "including in New Zealand".

4.5 The Complaint also states the Complainant has had clients in New Zealand for many years, "in that New Zealanders have booked and stayed at RITZ-CARLTON branded properties and have enjoyed all the facilities and services offered at those properties for many years.… Many of those stays have been booked from New Zealand by New Zealand-based travel agents on behalf of the Complainant's New Zealand-based end-clients. Further, with the growth of Internet bookings since the mid-1990s, there has been a significant increase in New Zealand-based end-clients making bookings directly themselves via the Internet and the Complainant's toll-free reservations telephone line in New Zealand." No further details are given of these activities involving New Zealand-based travel agents or end-clients.

4.6 The Complainant owns registrations of the trade mark RITZ-CARLTON in New Zealand. These include registration no. 758205 RITZ-CARLTON and no. 758206 THE RITZ-CARLTON and Device. Both date from 4 March 2014 and are in class 43 covering, amongst other things, hotels, restaurants and a variety of associated services. The Complainant has also provided copies of its registrations of RITZ-CARLTON in Australia and the United States for a similar range of services.

The Respondent's activities

4.7 The Respondent is Yan Sun whose address is in Albany, Auckland. The Domain Names were registered on 13 August 2015 which of course is well after the date of the Complainant's two trade mark registrations mentioned above.

4.8 The Complainant points out that the Respondent is the registrant of numerous .nz domain names which correspond to well-known names or trade marks. These include BACARDI, CADILLAC, DIOR, ESTEE LAUDER, GIORGIO ARMANI, PEUGEOT, RALPH LAUREN, TIMEX, TOYOTA and VOLKSWAGEN.

4.9 The Complainant has provided the results of a search generated on 19 January 2016 by the Domain Name Commission in response to a request for Registrant Information, lodged in contemplation of filing the Complaint. These search results, together with WHOIS print outs also provided by the Complainant, show the Respondent as the holder of these domain names.

4.10 The Complainant points out that the Respondent has no apparent rights in any of these names or trade marks, given that they represent some of the most famous brands in the world and are owned by traders other than the Respondent. The Complainant has provided evidence of this in the form of copies of trade mark registrations of these brands in New Zealand.

4.11 Currently the Domain Names both resolve to a "parking page". The Expert was invited to view this, and did so. The "parking page" belongs to an organisation called "Only Domains" and the associated website appears to be a forum for selling domain names.

5. Parties' contentions

Complainant

5.1 The Complainant seeks to have the Domain Names transferred to it from the Respondent.

5.2 The Complainant asserts that it has Rights in respect of "a name and mark which are identical or similar to the Respondent's Domain Names". It has clearly asserted its registered trade mark rights. It has not overtly said it has unregistered trade mark rights in respect of the trade mark RITZ-CARLTON, but it has said the mark is well known, including in New Zealand.

5.3 The Complainant also says that the Domain Names are Unfair Registrations. Its main assertions in this regard are as follows:

    a. The registration of the numerous other domain names by the Respondent demonstrates that the Respondent is engaged in a pattern of registration of .nz domain names which correspond to well-known names or trade marks in which the Respondent has no apparent rights, and the registration of the Domain Names is part of that pattern (paragraph 5.1.3 of the Policy).

    b. The circumstances indicate that the Respondent has registered or otherwise acquired the Domain Names primarily for the purposes of selling, renting or otherwise transferring the Domain Names to the Complainant or to a competitor of the Complainant, for a valuable consideration in excess of the Respondent's out-of-pocket costs directly associated with acquiring or using the Domain Names (paragraph 5.1.1 (a) of the Policy).

    c. The Respondent's use of the Domain Names (that is, as a "parking page") is use in a way that is likely to deceive, mislead and/or confuse consumers and traders to conclude that the Respondent's addresses have a business connection with the Complainant or "is otherwise endorsed, authorised by or in some way affiliated with the Complainant, when in fact it is not."

    d. The Respondent is using the Domain Names in a way which is likely to confuse, mislead or deceive people or businesses into believing that the Domain Names are registered to, operated or authorised by, or otherwise connected with the Complainant and therefore evidence that the Domain Names are an Unfair Registration pursuant to paragraph 5.1.2 of the Policy.

    e. The Respondent's use of the Domain Names distracts and/or it diverts business away from the Complainant and dilutes the distinctiveness of the RITZ-CARLTON trade Mark, and this is one way in which use of the Domain Names by the Respondent is use in a manner which takes unfair advantage of and is unfairly detrimental to the Complainant's Rights, within the words of paragraph (ii) of the definition of Unfair Registration in the Policy.

    f. The Respondent has registered the Domain Names primarily as blocking registrations against a name or mark in which the Complainant has Rights and unfairly disrupts the business of the Complainant (paragraphs 5.1.1 (b) and/or 5.1.1 (c) of the Policy).

    g. The Domain Names were registered in a manner, which at the time when the registration took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights, and so the registration of the Domain Names by the Respondent is also an Unfair Registration within the words of paragraph (i) of the definition of Unfair Registration in the Policy.

5.4 Finally, the Complainant says none of the factors in paragraphs 6.1 and 6.2 of the Policy apply. Based on all the above the Respondent says that the Domain Names in the hands of the Respondent are Unfair Registrations under paragraph 4.1.2 of the Policy.

Respondent

5.5 The Respondent has filed no response.

6. Discussion and findings

6.1 Given the absence of a Response, the Expert is able to consider only the information and submissions provided by the Complainant, which are undisputed, and to make appropriate inferences from the available facts.

Relevant Provisions of the Policy

6.2 The Complainant is required to prove that it has met the requirements in paragraph 4 of the Policy namely that:

    4.1.1 The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

    4.1.2 The Domain Name, in the hands of the Respondent, is an Unfair Registration.

6.3 Paragraph 4.2 requires the Complainant to prove to the Expert that both elements are present on the balance of probabilities.

6.4 The Policy provides that 'Unfair Registration' means a Domain Name which either:

    a. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or

    b. has been, or is likely to be, used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

6.5 Paragraph 5.1 of the Policy sets out a series of non-exhaustive factors which may be evidence that a Domain Name is an Unfair Registration. They include the following:

    5.1.1 Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

    a. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out of pocket costs directly associated with acquiring or using the Domain Name; or

    b. as a blocking registration against a name or mark in which the Complainant has rights; or

    c. for the purpose of unfairly disrupting the business of the Complainant; or

    5.1.2 Circumstances demonstrating that the Respondent is using the Domain Name in a way which is likely to confuse, mislead or deceive people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

    5.1.3 The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .nz or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

Application of the Policy in this case

6.6 The first question is whether the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names. Rights must be enforceable under New Zealand law and may be registered or unregistered.

Complainant's rights

6.7 The Expert finds that the Complainant has rights in respect of the trade mark RITZ-CARLTON in New Zealand by virtue of its trade mark registrations no's 758205 and 758206.

6.8 While the Complainant seems also to be asserting unregistered trade mark rights, there is insufficient basis on which to find it has such rights in New Zealand. The information provided in the Complaint, and set out above, is general and mostly describes the global position. It is said that the Complainant has had clients in New Zealand for many years, and that New Zealand-based end-clients make bookings directly from New Zealand. However no information has been provided on the number of clients and stays involved. Nor is there any evidence of promotion of the RITZ-CARLTON trade mark and the Complainant's associated hotel and other services, either in New Zealand or accessible from New Zealand.

6.9 There are no RITZ-CARLTON hotels in New Zealand (or Australia). The Complainant has provided no specific information on the extent of its reputation and goodwill in New Zealand. This means there can be no finding of unregistered trade mark rights.

6.10 The Domain Names are ritzcarlton.co.nz and ritzcarlton.nz. The Complainant's trade mark is RITZ-CARLTON. The Complainant's trade mark is therefore identical to the Domain Names.

Are the Domain Names, in the hands of the Respondent, Unfair Registrations?

6.11 Under paragraph 4.1.2 of the Policy the Complainant must show, on the balance of probabilities, that the Domain Names are unfair registrations in the hands of the Respondent.

6.12 Under paragraph B2.4 of Part B of the Policy a Complaint may relate to more than one Domain Name, provided that those Domain Names are registered in the name of the Respondent. That is the situation here.

6.13 The definition of Unfair Registration includes a Domain Name which either:

    a. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or

    b. has been, or is likely to be, used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

6.14 The Domain Name was registered on 13 August 2015. Therefore the circumstances around the Respondent's registration of the Domain Names are relevant. I will deal with the Complainant's main assertions in turn.

Respondent is engaged in a pattern of registration of .nz domain names which correspond to well-known names or trade marks in which the Respondent has no apparent rights, and the registration of the Domain Names is part of that pattern (paragraph 5.1.3)

6.15 As mentioned above, the Respondent has registered numerous .nz domain names which correspond to trade marks that clearly are well-known, and owned by parties other than the Respondent. The Respondent has no apparent rights in those trade marks.

6.16 The Expert therefore has no difficulty finding that the Respondent is engaged in a pattern of registration of .nz domain names as described in paragraph 5.1.3 of the Policy, and the Domain Name is part of that pattern.

Respondent has registered the Domain Names primarily for the purposes of selling, renting or otherwise transferring them to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly associated with acquiring or using the Domain Names (paragraph 5.1.1 (a) of the Policy)

6.17 The Respondent is not using the Domain Names. Both resolve to a "parking page" which appears to be a website concerned with selling domain names. Having said that, there is no direct evidence that the Respondent registered the Domain Names for the purposes of selling, renting or transferring them.

6.18 Therefore this assertion by the Complainant is not made out.

Respondent is using the Domain Names in a way which is likely to deceive, mislead and/or confuse (paragraph 5.1.2 of the Policy)

6.19 The Complainant's assertions regarding this factor relate to the possibility consumers and traders will believe there is a business connection between the Domain Names and the Complainant.

6.20 There is no evidence to support these assertions. Given that the Domain Names are not in use, and may even be available for sale, there is no basis on which consumers or traders could wrongly believe they are currently connected to the Complainant.

6.21 Similarly, there is no real basis for the Complainant's assertion that the Respondent's use of the Domain Names distracts or diverts business away from the Complainant and dilutes the distinctiveness of the RITZ-CARLTON trade mark. The Domain Names are not in use. Anyone who attempts to use them to reach the Complainant will not be diverted to another business.

Respondent registered the Domain Names primarily as blocking registrations and unfairly disrupts the business of the Complainant

6.22 The Complainant has also asserted that the Respondent has registered the Domain Names primarily as blocking registrations against a name or mark in which the Complainant has Rights, and unfairly disrupts the business of the Complainant (paragraph 5.1.1(b) and/or 5.1.1(c) of the Policy).

6.23 While there is no direct evidence of the Respondent's intentions, his registration of the Domain Names has had the effect of blocking the Complainant from itself registering them. New Zealand consumers looking for a local website of the Complainant are likely to try the Domain Names. It is reasonable to assume the Complainant would wish to own these Domain Names, and would not wish any competitor to be able to acquire them.

6.24 The Respondent himself has no legitimate reason to use the Domain Names. He must have been aware of the Complainant's likely interest in the Domain Names at the time he registered them. The fact he has registered numerous domain names comprising well-known trade marks of other parties is consistent with this. It is reasonable to infer that the Domain Names were registered primarily as blocking registrations and/or for the purpose of unfairly disrupting the business of the Complainant.

6.25 Given these circumstances the Expert finds that the Domain Names were registered in a manner which was unfairly detrimental to the Complainant's Rights.

6.26 As mentioned earlier, the Respondent has filed no Response, so has not disputed the Complainant's assertions.

6.27 There is no evidence of any of the factors listed in paragraph 6.1 of the Policy as potential evidence that the Domain Names are not Unfair Registrations.

6.28 The Expert is satisfied that the Complainant has shown that the Domain Names are Unfair Registrations.

7. Decision

7.1 In view of the findings made above the Expert directs that the Domain Names ritzcarlton.co.nz and ritzcarlton.nz be transferred to the Complainant.

Place of decision: Auckland

Date: 1 November 2016

Expert Name: Sheana Wheeldon

Signature: