The Ritz-Carlton Hotel Company, L.L.C. v. jared dotoli
Claim Number: FA2201001979603
Complainant is The Ritz-Carlton Hotel Company, L.L.C. (“Complainant”), represented by Sara K. Stadler of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is jared dotoli (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ritz-carltonresidences.com> (“Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 7, 2022; the Forum received payment on January 7, 2022.
On January 10, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ritz-carltonresidences.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ritz-carltonresidences.com. Also on January 12, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, The Ritz-Carlton Hotel Company, L.L.C., provides luxury hotel and resort services. Complainant has rights in the THE RITZ-CARLTON RESIDENCES mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,679,096, registered Jan. 21, 2003). The <ritz-carltonresidences.com> domain name is confusingly similar to Complainant’s THE RITZ-CARLTON RESIDENCES mark because Respondent has incorporated the entire mark, merely omitting the word “the” and incorporating the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <ritz-carltonresidences.com> domain because Respondent is not commonly known by the Domain Name and is not authorized to use Complainant’s THE RITZ-CARLTON RESIDENCES mark. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the Domain Name for a website (“Respondent’s Website”) to attempt to pass itself off as affiliated with Complainant with respect to a development operated by Complainant.
Respondent has registered and uses the <ritz-carltonresidences.com> domain name in bad faith. Respondent uses the Domain Name to impersonate Complainant and attract Internet users by creating a likelihood of confusion with Complainant’s mark. Further, Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the Domain Name, evidenced by Respondent’s use of the Domain Name to impersonate the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the THE RITZ-CARLTON RESIDENCES mark. The Domain Name is confusingly similar to Complainant’s THE RITZ-CARLTON RESIDENCES mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the THE RITZ-CARLTON RESIDENCES mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,679,096, registered Jan. 21, 2003). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the <ritz-carltonresidences.com> domain name is confusingly similar to Complainant’s THE RITZ-CARLTON RESIDENCES mark because it wholly incorporates Complainant’s THE RITZ-CARLTON RESIDENCES mark other than the word “the” and adds the gTLD “.com.” Adding a gTLD and deleting one generic word from the mark generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the THE RITZ-CARLTON RESIDENCES mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “jared dotoli” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is used to redirect to the Respondent’s Website where Respondent purports to be the official representative in respect of a development known as The Ritz Carlton Residences, Sunny Isles Beach, Miami. This development is actually operated by the Complainant and the Complainant maintains a website for the development at www.theresidencessunnyislesbeach.com “Complainant’s Website”). The Respondent’s Website directly passes off as an official website of the Complainant including by reproducing Complainant’s copyrighted images and designs of the Sunny Isles Beach development that are displayed on the Complainant’s Website. The use of a confusingly similar domain name pass off as a Complainant does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Name, August 3, 2017, Respondent had actual knowledge of Complainant’s THE RITZ-CARLTON RESIDENCES mark since the Respondent is using the Domain Name to pass itself off as the Complainant through a website referring to a development operated by Complainant that reproduces copyrighted material from Complainant’s Website. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses the Domain Name to redirect Internet users to Respondent’s own website where Respondent passes off as Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ritz-carltonresidences.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: February 8, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page