Ramada Worldwide, Inc. and Ramada International, Inc. v. Balticsea LLC
Claim Number: FA1403001547291
Complainant is Ramada Worldwide, Inc. and Ramada International, Inc. (“Complainant”), represented by Susan L. Crane, New Jersey, USA. Respondent is Balticsea LLC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ramadaresort.com>, registered with Tucows, Inc.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2014; the National Arbitration Forum received payment on March 6, 2014.
On March 6, 2014, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <ramadaresort.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 March 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2014 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@ramadaresort.com. Also on March 11, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
i. Complainant, Ramada Worldwide, Inc. and Ramada International, Inc., is a franchisor of hotels bearing the RAMADA brand, and offers its franchises a variety of services, including the operation of a central reservation system which can be reached by toll-free telephone numbers and over the Internet.
ii. Complainant is the owner of a trademark registration with the Canadian Intellectual Property Office (“CIPO”) for the RAMADA RESORT mark (Reg. No. TMA426896, registered May 6, 1994).
iii. Respondent’s <ramadaresort.com> domain name contains Complainant’s RAMADA RESORT mark in its entirety, eliminating the space between the words RAMADA RESORT and including the generic top-level domain (“gTLD”) “.com.”
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the <ramadaresort.com> domain name.
iii. Respondent’s domain name resolves to a website that allows the visitor to search for hotel accommodations around the world.
i. Respondent registered and is using the <ramadaresort.com> domain name in bad faith.
ii. Respondent intentionally registered a domain name containing the famous RAMADA mark in order to prevent Complainant from reflecting the mark in a corresponding domain name.
iii. Respondent has been the party in several UDRP proceedings that involved the registrations of domain names confusingly similar to third-party trademarks which proceedings results in the transfer of the domain name.
iv. Respondent uses the <ramadaresort.com> domain name to redirect Complainant’s customers to Respondent’s pay-per-click website.
v. Respondent is profiting financially through the receipt of click-through fees as a result of links to the competitors of Complainant.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
2. Respondent registered the <ramadaresort.com> domain name on November 2, 2004.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants in this matter: Ramada Worldwide, Inc. and Ramada International, Inc. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainant suggests that both parties are owned jointly by the Wyndham Worldwide Corporation. Complainant suggests that Ramada Worldwide is the owner of the USPTO trademark registrations for the RAMADA mark. Complainant further explains that Ramada International is a sister subsidiary that controls the trademark registrations for the RAMADA mark in all countries except the United States.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding.
Complainant argues that it is a franchisor of hotels bearing the RAMADA brand, and offers its franchises a variety of services, including the operation of a central reservation system which can be reached by toll-free telephone numbers and over the Internet. Complainant contends that it is the owner of a trademark registration with the CIPO for the RAMADA RESORT mark (Reg. No. TMA426896, registered May 6, 1994). See Complainant’s Exhibit B. The Panel notes that Respondent appears to reside in Russia. However, in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), the panel found that the Policy does not require that the mark be registered in the country in which respondent operates and it is sufficient that complainant can demonstrate a mark in some jurisdiction. Accordingly, the Panel holds that Complainant’s registration of the RAMADA RESORT mark with the CIPO sufficiently shows its rights in the mark under Policy ¶ 4(a)(i). See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges that Respondent’s <ramadaresort.com> domain name contains Complainant’s RAMADA RESORT mark in its entirety, eliminating the space between the words RAMADA RESORT and including the gTLD “.com.” Previous panels have held that a respondent’s deletion of spaces in complainant’s mark, as well as the addition of a gTLD, does not overcome a finding of identity pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Thus, the Panel finds that Respondent’s <ramadaresort.com> domain name is identical to Complainant’s RAMADA RESORT mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant claims that Respondent is not commonly known by the <ramadaresort.com> domain name. Complainant contends that Respondent is not now, nor has it ever been, a licensee of Complainant or any of its subsidiaries, nor has it ever had any affiliation with Complainant or its related companies. The Panel observes that the registrant of the disputed domain name is listed as “Balticsea LLC” in the WHOIS information. See Complainant’s Exhibit D. Therefore, the Panel determines that Respondent is not and has not been commonly known by the <ramadaresort.com> domain name according to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant states that Respondent’s <ramadaresort.com> domain name resolves to a website that allows the visitor to search for hotel accommodations around the world. The Panel notes that Respondent’s domain name links to a page containing third-party links such as “Ramada Limited Suites,” “Hotel Deals,” “Ramada Hotel Reservations,” as well as others. See Complainant’s Exhibit E. Complainant asserts that it is very likely that Respondent receives click-through fees from the disputed domain name for each time a visitor to the website clicks on a third-party link. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Accordingly, the Panel finds that Respondent is not using the <ramadaresort.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent has been the party in several UDRP proceedings that involved the registrations of domain names confusingly similar to third-party trademarks which proceedings results in the transfer of the domain name. See McLaren Health Care Corporation v. Balticsea LLC, FA 1475825 (Nat. Arb. Forum Jan. 24, 2013); L’Oreal v. Balticsea LLC, D2012-2460 (WIPO Feb. 8, 2013); Comerica Incorporated v. Balticsea LLC, D2013-0932 (WIPO July 16, 2013). Previous panels have held that a respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer shows bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). Thus, the Panel finds that Respondent has registered and is using the <ramadaresort.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant claims that Respondent uses the <ramadaresort.com> domain name to redirect Complainant’s customers to Respondent’s pay-per-click website. The Panel notes that Respondent’s disputed domain name resolves to a competing hyperlink directory featuring links to various third-party hotel services. See Complainant’s Exhibit E. Complainant argues that Respondent intentionally deprived Complainant and its licensees the chance to be contacted by prospective customers. The Panel therefore holds that Respondent’s use of the <ramadaresort.com> domain name disrupts Complainant’s business and finds bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent is profiting financially through the receipt of click-through fees as a result of links to the competitors of Complainant. The Panel notes that Respondent is using the <ramadaresort.com> domain name in connection with a webpage that provides competing links to competing hotel services such as “Hotel Discounts,” “Ramada Vacation Suites,” “Find Hotels,” and more. See Complainant’s Exhibit E. As the Panel finds that Respondent is using the disputed domain name to divert consumers away from Complainant’s website to its own website for commercial profit, the Panel concludes that Respondent has registered and is using the <ramadaresort.com> domain name in bad faith according to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant argues that when Respondent purchased the disputed domain name, it had constructive knowledge of Complainant’s RAMADA marks via numerous preexisting trademark registrations around the world and must have had actual knowledge that the RAMADA marks were used in connection with lodging and lodging reservation services. While panels have previously found that constructive notice is not enough to support a finding of bad faith, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and hold that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ramadaresort.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 17, 2014
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