Ellerman Investments Limited; The Ritz Hotel Casino Limited v. Al Cleary

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

Ellerman Investments

Limited and The Ritz Hotel Casino Limited v. Al Cleary

Case No. D2003-0362

1. The Parties

The Complainants are Ellerman

Investments Limited ("Ellerman"), a private company with limited liability

incorporated under the laws of England and having its principal place of business

in England and the Ritz Hotel Casino Limited ("Ritz"), which also

is a private company with limited liability, incorporated under the laws of

England, with its principal place of business in England.

The Respondent is Al Cleary,

of Archbald, Pennsylvania, United States of America.

2. The Domain Name and

Registrar

The disputed domain name

<ritzcasinoclub.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed

with the WIPO Arbitration and Mediation Center (the "Center")

on May 12, 2003. On May 12, 2003, the Center transmitted

by email to Wild West Domains, Inc. a request for registrar verification in

connection with the domain name at issue. On May 12, 2003, Wild West

Domains, Inc. transmitted by email to the Center its verification response confirming

that the Respondent is listed as the registrant and providing the contact details

for the administrative, billing, and technical contact. The Center verified

that the Complaint satisfied the formal requirements of the Uniform Domain Name

Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent

of the Complaint, and the proceedings commenced on May 15, 2003. In

accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2003.

The Respondent did not submit any response. Accordingly, the Center notified

the Respondent’s default on June 10, 2003.

The Center appointed Edward

C. Chiasson, Q.C. as the sole panelist in this matter on June 24, 2003.

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.

Because the material filed

by the Complainants referred to correspondence from the Respondent that was

not included in the file delivered to the Administrative Panel, it requested,

received and has considered a May 12, 2003, letter from the Respondent

to the Center.

An examination of the material

confirms that all technical requirements for the prosecution of this proceeding

were met.

4. Factual Background

The following information

derives from the Complaint.

The Complainant Ritz is

the exclusive licensee of the Complainant Ellerman’s rights in certain "Ritz"

trademarks for the provision of gaming services at the Ritz Casino. The latter

owns 75% of the shares of the former.

The trademark RITZ is a

famous mark for gaming services. The Complainant Ellerman is the owner of The

Ritz Hotel (London) Limited ("Ritz London"), the company that owns

and runs the Ritz Hotel in London. The hotel also has a world renowned casino

in its former ballroom. The Complainant Ritz uses Ritz Trademarks (amongst others)

for the provision of gaming services at the casino located in the former ballroom

of the Ritz hotel known as the Ritz Club or Ritz Casino (the "Ritz Casino").

The Complainant Ellerman

is the proprietor of a large portfolio of registered trademarks incorporating

the marks THE RITZ CLUB, RITZ and RITZ CASINO (the "Ritz Trademarks").

The Complainant Ellerman

has trademark registrations for the mark RITZ CASINO for gaming in the countries

set out below.

Mark

Registration

no.

Country

Class

Services

Date

RITZ

CASINO

2214368

UK

41

Gaming

services

15/11/99

RITZ

CASINO logo

2214369

UK

41

Gaming

services

15/11/99

RITZ

CASINO

7891

Jersey

41

Gaming

services

04/09/00

RITZ

CASINO

1883

British

Virgin Islands

41

Gaming

services

15/02/01

RITZ

CASINO logo

1882

British

Virgin Islands

41

Gaming

services

15/02/01

The Ritz Casino is variously referred to by its members and

by members of the public as the "Ritz Club" and the "Ritz Casino."

The Complainant Ellerman has trademark registrations for the

words RITZ CLUB in class 41 for gaming in the following countries:

Mark

Registration

no.

Country

Class

Services

Date

THE

RITZ CLUB

2206186

UK

41

Gaming

services

18/08/99

RITZ

CLUB logo

2206189

UK

41

Gaming

services

18/08/99

THE

RITZ CLUB

7890

Jersey

41

Gaming

services

04/09/00

The Complainant Ellerman’s

trademark registrations for the word RITZ for gaming services are set out below.

(This is not an exhaustive list.)

Mark

Registration

no.

Country

Class

Services

Application

Date

RITZ

1509163

UK

41

Gaming

services

10/08/92

RITZ

7892

Jersey

41

Gaming

services

04/09/00

RITZ

1509163

Guernsey

41

Gaming

services

04/09/00

RITZ

145173

Israel

41

Gaming

services

22/12/00

RITZ

2000/27834

Hong

Kong

41

Gaming

services

23/12/00

RITZ

465435

Mexico

41

Gaming

services

11/01/01

RITZ

1881

British

Virgin Islands

41

Gaming

services

15/02/01

RITZ

41328

United

Arab Emirates

41

Gaming

services

26/02/01

RITZ

86735

Lebanon

41

Gaming

services

16/03/01

RITZ

77690

Syria

41

Gaming

services

17/03/01

RITZ

5827

Antigua

& Barbuda

8,

49

Computer

software; computer software for gaming and gambling; software for use

in the provision of gaming services via the Internet. Games of all kinds

and sporting articles not included in other clauses; cards, games articles

for use in casinos; parts and fittings for the aforesaid goods.

26/02/01

RITZ

2002-110823

Dominican

Republic

41

Gaming

services

14/05/02

RITZ

8715

Gibraltar

41

Gaming

services

18/06/02

The Complainant Ellerman has many other pending trademark registrations

for the trademarks RITZ, THE RITZ CLUB and RITZ CASINO for gaming services throughout

the world.

There is substantial goodwill in the RITZ, RITZ CASINO and

RITZ CLUB names and trademarks. This goodwill has been generated world-wide

as a result of the extensive reputation of the Ritz Casino and the substantial

investment which has been made by the Complainants and their predecessors in

the marketing and promotion of the Ritz Casino.

The Ritz hotel is one of the most well known hotels in the

world. In the last two years approximately 62,000 guests stayed at the Ritz

hotel. Approximately 75% of them were international visitors.

The Ritz hotel generated total revenue of £17.3 million in

2001 and £17.5 million in 2002.

The fame of the Ritz hotel was acknowledged in the book "The

World’s Greatest Brands" by Interbrand and edited by Nicholas Kochan. In

that book the Ritz hotel is described as "one of the most prestigious hotels

in the world" and the "Ritz" brand in the category of leisure

and travel is ranked 9th of the world’s greatest brands.

The Ritz hotel and the Ritz Casino are the subject of several

books and songs. The famous song "Puttin’ on the Ritz" by Irving Berlin

is about the Ritz hotel in London.

In addition books, such as "The London Ritz – A Social

and Architectural History" by Hugh Montgomery-Massingberd and David Watkin,

and "The Ritz Hotel London" by Marcus Binney have been written

about the Ritz hotel. Many articles in magazines and newspapers have also been

written about the Ritz hotel and the Ritz Casino.

There has been a licensed casino operating in the former ballroom

of the hotel since 1978. The casino is referred to by its members and members

of the public as the "Ritz," the "Ritz Casino" or the "Ritz

Club." For the last 23 years it has been one of, if not the premier casino

in London, attracting custom from many wealthy and well-known people from all

over the world. So far as the Complainants are aware, it is the only casino

operating anywhere in the world which is known by the names "Ritz,"

"Ritz Club" and "Ritz Casino."

The Ritz Casino used to be run by a group of companies led

by the parent company London Clubs International plc ("LCI"). LCI

opened and ran the Ritz Casino in 1978. The "Ritz" brand then

was used under licence from Ritz London and was developed by LCI as its "flagship"

brand. This was demonstrated extensively in corporate literature and promotional

materials throughout the 20 years of LCI’s involvement in running the Ritz Casino.

When LCI was floated on the London Stock Exchange in 1994,

the flotation document stated:

"The Ritz Club has been operating since 1978 in the former

ballroom of the Ritz hotel. It is London Clubs’ most exclusive club catering

to a small yet high spending international clientele. It is the "flagship"

of the Group and an important factor in maintaining London Clubs’ international

profile…The Ritz, as illustrated by the results of recent years, is a very successful

operation…It is a very upmarket and select club run exclusively for major players."

The importance of the "Ritz" brand to LCI as its

flagship casino meant that there was a huge investment in the world-wide promotion

and marketing of the brand. The Ritz Casino was the first casino to become

involved in international marketing and the many events arranged and/or sponsored

by LCI proved to be very successful and received a great deal of publicity.

Between 1990 and 1998, LCI spent the following sums on promotion

and marketing of the Ritz Casino in the UK and internationally:

Year

Spend

(£)

1990

890,469

1991

880,660

1992

873,592

1993

862,680

1994

862,680

1995

893,465

1996

1,046,584

1997

1,105,762

January

– July 1998

241,721

This investment by LCI (the majority of which was spent overseas)

included the following:

1. sponsorship of sporting events and charity events world-wide

including events in the UK, Malaysia, Singapore, Hong Kong, Abu Dhabi and

Cyprus; these events have taken place annually for many years; a summary of

the sporting events is below; the exposure of the Ritz, Ritz Casino and Ritz

Club name as a result of these events has been huge, particularly because of

the extensive television, newspaper, and more recently Internet coverage of

sporting events;

Years

event has been held

Description

of event and country

1978-1995

"Ritz

Club Charity Trophy" (awarded to top jockey at five top UK race

meetings every year).

1978-1995

"Ritz

Gold Cup" at Ascot and "Ritz Club Injured Jockey Fund"

in UK.

1982-1993

"Ritz

Club Golfer of the Year Award" in UK.

1982-1990

"Ritz

Club Horse of the Year Award," Malaysia and Singapore.

1988-1990

"Ritz

Club Golfer of the Year Award," Malaysia.

1988-1990

"Ritz

Club International Polo Invitation Tournament," Malaysia.

1993-1995

"Ritz

Trophy Race," Dubai and Abu Dhabi.

1990-1996

"Ritz

Club Trophy Stakes," Nicosia, Cyprus.

1994-1995

"Ritz

Club Leading Apprentice Jockey Award," Hong Kong.

2. "wining and dining" members and potential members

by Customer Relations Officers who are employed by the Complainant Ritz;

3. placement of advertisements and other promotional articles

in many magazines, both UK and foreign;

4. through one of LCI’s subsidiaries, Mayfair Maritime Casinos

Limited, LCI ran casinos on board a number of prestigious cruise ships owned

by Cunard and Celebrity Cruises; these casinos held "Ritz Club" nights

on the ships where the casinos onboard were decorated to look like the Ritz

Casino in London.

In addition both LCI and the Complainants have produced their

own magazines which promote the Ritz Casino. LCI’s magazine "Cachet"

was first produced in the early 1980’s and was circulated to all the members

of all of LCI’s casinos. The Complainants’ magazine, which was first published

in Winter/Spring 2000, is also circulated to Ritz Casino members. The Complainant

Ritz carries out various other forms of promotion for the Ritz Casino, including

special country themed dinners, sponsorship of sporting events overseas and

the provision of gifts to members.

In the summer of 1998, LCI’s lease for the premises at the

Ritz expired and LCI transferred its gaming licence to new premises in St James’s

Street. When the lease terminated, so did LCI’s licence to use the "Ritz"

trademark. The Complainant Ritz took over running the Ritz Casino in 1998. When

it did so, the Complainant Ritz continued the promotion of the Ritz Casino world-wide.

Since then, the Complainants have continued to expand and develop the very substantial

goodwill and reputation in the UK and throughout the world for probity, quality

and elegance in the provision of gaming services.

The Complainant Ritz’s expenditures on marketing and promotion

of the Ritz Casino since taking over from LCI are as follows:

Year

Spend

(£)

July-December

1998

958,571

1999

3,471,385

2000

3,271,333

2001

3,630,823

2002

3,792,006

The majority of the marketing and promotional expenditure is

directed at foreign nationals, whether existing or potential clients because

approximately 98% of the revenue of the Ritz Casino derives from overseas members.

The turnover of the Ritz Casino for the years 1994-2000 was

as follows:

Year

ending 31 December

Turnover

(£) - net gaming win

1994

55,569,000

1995

27,219,000

1996

24,935,000

1997

17,204,000

1998

1,252,024

1999

13,132,379

2000

15,531,093

2001

19,622,161

2002

29,114,335

During the financial year to December 31, 2001, the

cash drop at the Ritz Casino was in excess of £141 million, producing a net

gaming win (turnover) exceeding £15 million. Drops in other years were of a

similar percentage in terms of the ratio of the net win to the overall drop.

Throughout its existence the Ritz Casino has drawn its clientele

from all over the world This reputation is not limited to the United Kingdom

but extends world-wide. Its world-wide reputation is due to the mobile nature

of the clients of the Ritz Casino, the majority of whom are foreigners or frequent

travelers from the Far East and the Middle East. As at May 2003, the Ritz Casino

had 7891 members, of which only 2347 were British. Members of the Ritz Casino

come from 76 different countries (excluding the UK).

Since September 2002, the Complainants have provided, via a

related company, gaming services online over the Internet. A website for online

gaming services has been launched at the domain name <theritzclublondon.com>,

which is owned by the Complainant Ellerman. The domain name <ritzcasino.com>,

which also is owned by the Complainant Ellerman, forwards automatically to the

"www.theritzclublondon.com" site. This website contains information

about the Complainants’ land based casino from which there is a link to the

"www.theritzclublondon.com" site.

The Complainant Ellerman’s policy is to protect the reputation

attached to the Ritz trademarks by monitoring the registration of trademarks

and domain names which contain the word "Ritz" by means of a trademark

and domain name watching services. As a result of using these monitoring services,

the Complainant Ellerman became aware in approximately January 2003 that the

Respondent had registered the subject domain name.

The Complainant Ellerman employs a trademark watching service

on the trademark RITZ and never received any notices of any applications for

the trademarks RITZ, RITZ CLUB or RITZ CASINO by the Respondent.

As far as the Complainants are aware, the Respondent has no

trademark rights in the marks RITZ, RITZ CASINO or RITZ CLUB.

The Complainant Ellerman has not granted the Respondent a licence

to use the subject domain name.

The website to which the subject domain name resolves purports

to be an online casino portal. It offers visitors the chance to play slot machines

at a casino or bingo or sports betting. It claims to have over 600 casinos and

sports book operators and to have identified which offer the highest rewards

and bonuses for players, although the links on the left hand side of the page

are not yet in operation. It also offers an "Affiliate" scheme for

Webmasters, whereby Webmasters are paid commissions on players routed through

their site.

The Complainants’ authorized representative wrote to the Respondent

on March 7, 2003, setting out the Complainants’ rights in the Ritz

Trademarks and requesting that the Respondent transfer the subject domain name

to the Complainants. No response was received.

The Respondent did not participate formally in this proceeding,

but on May 12, 2003, the Respondent wrote to the Center as follows:

"My name is Al Cleary, and I own the Domain Name, "www.ritzcasinoclub.com"

and I run The Ritz, a Dinner Theatre and Restaurant in Scranton Pennsylvania.

I am relatively new to the Internet so you will have to bear with me for not

understanding the procedures or terms associated with a lot of the information

in your complaint. If I was not able to use the domain Ritz Casino Club, then

why was I able to purchase it from Network Solutions? Doesn’t the fact that

we run a business with the name Ritz have any bearing on any of this?

"If the THE RITZ HOTEL CASINO LIMITED, wants to purchase

this domain from me I am more then willing to sell it, if they are willing to

cover the expenses I have incurred in creating this website, and printing, letterhead,

etc. I am not a scam artist trying to make a fast buck. I am a hard working

businessman, who right now feels like I am being bullied by big business.

"I am very open to discussion on this matter. I can be

contacted by email at helpdesk@ritzcasinoclub.com."

On May 16, 2003, the Complainant responded to the

letter with an e-mail attached letter offering to pay the Respondent’s out-of-pocket

expenses of registering the subject domain name. No reply has been provided

to the Administrative Panel.

5. Parties’ Contentions

A. Complainant

The Complainants rely on

the registration and use of the words "ritz" and "casino"

and state that the subject domain name is confusingly similar.

In support of their contention

that the Respondent does not have a legitimate interest in the subject domain

name, the Complainants refer to the fact that they have successfully obtained

the transfer of a number of domain names using the words "ritz" and

"casino." They also note that the Respondent does not have trademark

rights to those words and did not have the Complainants’ permission to register

the subject domain name. The extensive use and notoriety of the Complainants’

marks is said to support the proposition that no one other than the Complainants

can have a legitimate interest in the mark "RITZ CASINO" in the context

of gaming.

The notoriety of the Complainants’

marks also is said to support bad faith. Because of that notoriety, the Respondent

must have registered the subject domain name to benefit from the Complaints’

reputation by confusing users.

B. Respondent

The Respondent did not

formally reply to the Complainant’s contentions. He notes that he was able to

register the subject domain name and that he operates a business which incorporates

the word "ritz."

6. Discussion and Findings

Paragraph 4(a) of the Policy

requires the Complainant to prove that:

(i) the domain name is

identical or confusingly similar to a service mark in which the Complainant

has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name;

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides

for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that

indicate that the Respondent has registered or has acquired the domain name

primarily for the purpose of selling, renting, or otherwise transferring the

domain name registration to the Complainant who is the owner of the trademark

or service mark or to a competitor of the Complainant, for valuable consideration

in excess of the Respondent’s documented out-of-pocket costs directly related

to the domain name;

(ii) registration of the

domain name in order to prevent the owner of the trademark or service mark from

reflecting the mark in a corresponding domain name, provided that the Respondent

has engaged in a pattern of such conduct;

(iii) registration of the

domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain

name, intentionally attempting to attract, for commercial gain, Internet users

to the Respondent’s website or other on-line location, by creating a likelihood

of confusion with the Complainant’s mark as to the source, sponsorship, affiliation,

or endorsement of the website or location or of a product or service on the

website or location.

These are illustrative

and do not represent the only circumstances from which may arise evidence of

bad faith.

The Complainants refer

to a number of previous domain name dispute and domestic court decisions. While

these are neither controlling nor binding on this Administrative Panel, reference

to them often is of assistance.

A. Identical or Confusingly

Similar

It is clear that the Complainants

have rights to the words "ritz" and "casino." The subject

domain name incorporates both. Recognizing that the Complainants’ marks are

used in the context of gaming and as associated with the Ritz Club, the subject

domain name is confusingly similar to the Complainants’ marks.

The Administrative Panel

is satisfied that the Complainants have met the requirements of paragraph 4(a)(i).

B. Rights or Legitimate

Interests

The Respondent operates

a business using the word "ritz." As a general proposition, that could

be a foundation for the conclusion that he has a legitimate interest in a domain

name that incorporates that word. In this case, the subject domain name also

includes the words "casino" and "club." There is no apparent

connection between them and the Respondent’s business.

In addition, the website

to which the subject domain name resolves operates a casino. It has no apparent

connection to the business to which the Respondent referred in his May 12, 2003,

letter.

The Complainants’ operations

and marks are well known, especially in the context of gaming. Without concluding

that there never could be another legitimate user of the words "Ritz Casino,"

in this case the notoriety of the Complainants’s use supports a finding adverse

to the Respondent.

The Administrative Panel

is satisfied that the Complainants have met the requirements of paragraph 4(a)(ii).

C. Registered and Used

in Bad Faith

A finding that a domain

name is confusingly similar to a mark of another does not lead automatically

to a conclusion of bad faith, but the facts that the support the finding may

be relevant to the bad faith inquiry.

A respondent is not obliged

to participate in a domain name dispute, but its failure to do so leaves it

open to the inferences that flow logically from assertions made by a complainant

that are not obviously unreasonable.

In this case, the Respondent

linked his use of the subject domain name to a restaurant business with no obvious

connection to gaming. He apparently did not respond to the Complainants’ offer

to reimburse him for his costs.

Using the words "ritz"

and "casino" in the context of gaming leads to an inference that the

user seeks to benefit from the goodwill of the Complainants by confusing potential

customers.

The notoriety of the Complainants’

operations also supports an inference of bad faith in the registration of the

subject domain name.

The Administrative Panel

is satisfied that the Complainants have met the requirements of paragraph 4(a)(iii).

7. Decision

Based on the information

provided to it and on its findings of fact, the Administrative Panel concludes

that the Complainants have established their case. They ask that the subject

domain name be transferred to the Complainant Ellerman. The Administrative Panel

so orders.

Edward C. Chiasson,

Q.C.

Sole Panelist

Dated: July 17, 2003

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