DECISION

The Rittenhouse Development Company, Owner and Operator of The Rittenhouse Hotel v. Pro-Life Domians

Claim Number:  FA0309000193763

PARTIES

Complainant is The Rittenhouse Development Company, Owner and Operator of The Rittenhouse Hotel, Philadelphia, PA (“Complainant”) represented by Vito Petretti, of Wolf, Block, Schorr and Solis-Cohen LLP.  Respondent is Pro-Life Domians, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <therittenhousehotel.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

PANEL

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 8, 2003; the Forum received a hard copy of the Complaint on September 10, 2003.

On September 9, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <therittenhousehotel.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 6, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@therittenhousehotel.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 9, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <therittenhousehotel.com> domain name is confusingly similar to Complainant’s THE RITTENHOUSE mark.

2. Respondent does not have any rights or legitimate interests in the <therittenhousehotel.com> domain name.

3. Respondent registered and used the <therittenhousehotel.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has been using the THE RITTENHOUSE mark since at least as early as June 19, 1989 in connection with its hotel services.  Complainant is the holder of Registration No. 2,740,401 (registered on the Principal Register on Jan. 29, 1991) with the United States Patent and Trademark Office (“USPTO”) for the THE RITTENHOUSE mark.

Complainant uses the THE RITTENHOUSE mark to advertise its services throughout the United States via newspaper advertisements, trade and professional directories and the Internet.  In 2001 alone, Complainant spent approximately $50,000.00 advertising and marketing its services.  In addition, Complainant has registered numerous domain names using its mark including <therittenhousehotel.net>, <therittenhousehotel.biz>, <therittenhousehotel.info> and <therittenhousehotel.org>.

Respondent registered the <therittenhousehotel.com> domain name on March 9, 2003.  Respondent has used the domain name at issue to link Internet users to various other businesses’ websites.  Currently, Respondent is using the disputed domain name to redirect Internet users to an anti-abortion website at <abortionismurder.org>, which features graphic images of aborted fetuses and promotes various organizations and entities related to its cause.

DISCUSSION

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."

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.

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.

Identical and/or Confusingly Similar

The Panel concludes that Complainant has established rights the THE RITTENHOUSE mark through registration with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent has added the descriptive term “hotel” to Complainant’s entire mark.  Respondent’s addition of the word “hotel” does not mitigate the fact that the distinguishing portion of Respondent’s domain name is THE RITTENHOUSE, which is identical to Complainant’s mark.  In fact, the additional term “hotel” adds to the confusion because Complainant’s mark is used in connection with hotel services.  Thus, the Panel finds that the <therittenhousehotel.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not provide the Panel with any evidence that it has rights and legitimate interests in the <therittenhousehotel.com> domain name.  Thus, the Panel may accept Complainant’s unrebutted allegations as true.  Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests under Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent is not affiliated with Complainant’s business.  In addition, Respondent is not a licensee of Complainant and has never requested permission to use Complainant’s mark.  Furthermore, Respondent has not provided any information indicating that it is commonly known by the <therittenhousehotel.com> domain name.  Consequently, the Panel finds that Respondent is not commonly known by the disputed domain name.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use). 

Respondent has been using the <therittenhousehotel.com> domain name to link Internet users to websites for various other businesses.  Furthermore, Respondent is now using the domain name to route unsuspecting Internet users to the website located at <abortionismurder.org> that displays anti-abortion rhetoric.  Therefore, the Panel finds that Respondent’s use of the domain name to direct Internet users to a politically-charged website is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii).  See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to an “Abortion is Murder” website, Respondent has not demonstrated a right or legitimate interest in the disputed domain name); see also Am. Nat’l.  Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (Respondent used the disputed domain name to divert Internet users to websites, such as an anti-abortion website, which are not associated with or authorized by Complainant.  “Appropriating Complainant’s mark for these purposes cannot equate to a bona fide offering of goods and services, and does not evidence legitimate noncommercial or fair use of the domain name”).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Policy ¶ 4(b) provides a list of factors that evidence bad faith registration and use of a domain name.  However, the policy expressly recognizes that the list of factors is not an exclusive list of circumstances evidencing bad faith.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in ¶ 4(b) of the Policy is not an exhaustive list of bad faith evidence).

Panels have repeatedly found that use of another’s trademark to divert Internet users to politically-charged websites, especially the <abortionismurder.org> website, is evidence of bad in itself.  Thus, the Panel finds that Respondent’s redirection of Internet users to the <abortionismurder.org> website is bad faith use and registration pursuant to Policy ¶ 4(a)(iii).  See McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (“By intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”); see also See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith).

Moreover, Respondent registered a domain name that incorporates Complainant’s entire mark and adds a generic term that directly relates to Complainant’s business.  Complainant has also exhausted significant amounts of time and money in advertising its mark.  Furthermore, Complainant’s registration with the USPTO of its mark put Respondent on constructive notice of Complainant’s rights in the THE RITTENHOUSE mark prior to Respondent’s registration.  Thus, the Panel finds that Respondent registered the domain name with knowledge of Complainant’s rights in its mark.  Accordingly, the Panel concludes that Respondent’s registration was in bad faith under Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <therittenhousehotel.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  October 16, 2003

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