Westmore · UDRP DecisionRitzcarlton.tokyo
The Panel ordered transfer of <ritzcarlton.tokyo>. It found the domain confusingly similar to the Complainant’s RITZ-CARLTON trademark, found no rights or legitimate interests on the Respondent’s part, and concluded that the domain was registered and used in bad faith through a pay-per-click website containing links relating to the Complainant’s properties and competitors.
The timeline behind ritzcarlton.tokyo
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The decision illustrates a straightforward application of the UDRP where a well-known hotel mark was reproduced in a geographic new gTLD and used for hotel-related pay-per-click links. The combination of prior trademark rights, an industry-relevant domain string, competitor-linked advertising, lack of authorization, and an unanswered complaint supported findings on all three elements.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Ritz-Carlton Hotel Company, L.L.C v. Taro Kokatsu Case No. D2018-2049 1. The Parties The Complainant is The Ritz-Carlton Hotel Company, L.L.C of Bethesda, Maryland, United States of America (“United States”), represented by Steven M. Levy, United States. The Respondent is Taro Kokatsu of Tokyo, Japan. 2. The Domain Name and Registrar The disputed domain name <ritzcarlton.tokyo> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 13, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 14, 2018. On September 13, 2018, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. On September 14, 2018, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on September 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2018. The Center appointed Douglas Clark as the sole panelist in this matter on October 17, 2018. 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. 4. Factual Background Founded in 1927, the Complainant, Ritz-Carlton Hotel Company, LLC, is an international luxury hotel chain which has 148 properties in 30 countries. In particular, in Japan the Complainant has four properties in Tokyo, Kyoto, Okinawa and Osaka. The Complainant is the owner of trademarks in the name “Ritz-Carlton”, which was first registered in the United States on June 27, 1978 (registration no. 1094823) and in Japan on January 17, 2003 (registration no. 3371449). Since 1997, the Complainant has also been the owner of the domain name <ritzcarlton.com> and it also owns and operates the website “www.ritzcarton.com” through which it promotes and takes bookings for its properties worldwide. The Respondent appears to be an individual of Tokyo, Japan. The disputed domain name <ritzcarlton.tokyo> was registered on August 4, 2014. The disputed domain name resolves to a pay-per-click website which redirects users to hotel properties, including those of the Complainant and its competitors. 5. Parties’ Contentions A. Complainant Identical or confusingly similar The Complainant submits that the disputed domain name contains its registered trademark RITZ-CARLTON in full which may mislead the public to believe that the disputed domain name is somehow connected to the Complainant. The Complainant further submits that the hyphen in its trademark should be ignored for the purposes of comparing it with the disputed domain name. The Complainant also submits that the use of the generic Top-Level Domain (“gTLD”) “.tokyo” increases the risk of confusion because Internet users familiar with the Complainant’s trademark are likely to believe that the disputed domain name may have been specifically designed by the Complainant to lead to a site from which Ritz-Carlton properties may be viewed and booked. No rights or legitimate interests The Complainant submits that the Respondent is not holder of the trademark RITZ-CARLTON, is not commonly known by the disputed domain name and has no rights or legitimate interests in the trademark RITZ-CARLTON. The Complainant also submits that the Complainant has not licensed or otherwise granted permission to the Respondent to make use of its RITZ-CARLTON trademark or the disputed domain name. Registered and is being used in bad faith The Complainant submits that since its trademark is well known in Japan and predates the registration of the disputed domain name by 11 years, the Respondent was or should have been aware of the RITZ-CARLTON trademark and the website “www.ritzcarlton.com” prior to registering the disputed domain name and this constitutes bad faith. Furthermore, the Complainant maintains that the website to which the disputed domain name currently resolves contains pay-per-click links which relate to the Complainant’s properties and or to those of competitors. Therefore, the Complainant argues that the Respondent is using the disputed domain name only for commercial gain and is profiting from the Complainant’s trademark through click-through fees by users of the website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the proceeding The language of the Registration Agreement is Japanese. However, paragraph 11(a) of the Rules provides that: “unless otherwise agreed by the parties, or specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Complainant requested the language of the proceeding be in English on the grounds that neither the Complainant, nor its representatives, is familiar with the Japanese language therefore the Complainant is not in a position to conduct these proceedings in Japanese without facing significant additional expense and delay. The Complainant further submits that the Respondent has registered the disputed domain name in standard English characters, and numerous other similar English language domain names such that the Respondent should have a functioning command of the English language, and the pay-per-click website which resolved to by the disputed domain name is in English. The Respondent has not responded to the proceeding nor to the request for the language of the proceeding to be in English. The final determination of the language of the proceeding lies with this Panel. In Zappos.com, Inc. V. Zufu aka Huahaotrade , WIPO Case No. D2008-1191 , this panel decided that the Respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint.” Based on the fact that the Respondent has not responded to the Center's language communications and for the reasons included above, the Panel determines to accept the Complaint in English and render its decision in English. 6.2 Substantive Issues A. Identical or Confusingly Similar The disputed domain name <ritzcarlton.tokyo> is confusingly similar to the Complainant’s RITZ-CARLTON trademark. It incorporates the Complainant’s registered trademark RITZ-CARLTON in its entirety together with the gTLD “.tokyo”, which should be disregarded under the first element confusing similarity test. ( WIPO Overview 3.0 , section 11.2 .) Further, it has already been decided that removing the hyphen from RITZ-CARLTON in the domain name does not differentiate it from the trademark. See The Ritz Carlton Hotel Company, LLC v. Club Car Executive Transportation and Denis Rooney , WIPO Case No. D2000-0611 . The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview 3.0 provides: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith The Panel finds that the disputed domain name <ritzcarlton.tokyo> was registered in bad faith and is being used in bad faith. The Panel is satisfied that that the Respondent must have known of the Complainant’s well-known trademark and website when the Respondent registered the disputed domain name. This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The disputed domain name resolves to an active website which the Respondent is using for commercial gain and is profiting from the Complainant’s trademark through pay-per-click fees generated by users of the website. The use of the Complainant’s trademark is clearly designed to attract users. The third element of paragraph 4(a) of the Policy is therefore satisfied. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ritzcarlton.tokyo> be transferred to the Complainant. Douglas Clark Sole Panelist Date: November 5, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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