It was tanks and lawns as The Ritz Hotel recently took action in Chancery against a crop of ritzpoker and ritzypoker domain names. Was there a likelihood of confusion between Ritz and Ritzpoker?
Topic: Summary judgment found for the Ritz against domain name holder – preventing the use of "ritz-style" domain names
Who: Ellerman Investments Ltd and another v C-Vanci and another
Where: Chancery Division
When: 16 June 2006
The claimants were the owners of the Ritz Hotel in London and the hotel casino, a 75% owned subsidiary known as the Ritz Club. The Ritz hotel was the proprietor of numerous trade mark registrations incorporating or consisting of the name 'ritz', including a UK registered trade mark for gaming services and a European Community trade mark for the provision of gaming services. The Ritz Club was the exclusive licensee in relation to the provision of gaming services at the casino under and by reference to the trade marks. They also provided, through a website known as Ritz Online, online gaming accessed via the domain names 'ritzclublondon.com' and ritzclublondon.co.uk'. The defendants were private individuals who had registered the domain names 'ritzpoker.net', 'ritzpoker.org', 'ritzpoker.info', 'ritzpoker.biz', 'ritzypoker.co.uk' and 'ritzypoker.net' and were using them to promote a gambling related website which contained links to third party sites on which one could game. The claimants applied for summary judgment in order to restrain the defendants from infringing the claimant's trade marks in the word 'ritz'.
To receive the order, the Ritz needed to show that there was no real prospect of the court finding otherwise than there existed a likelihood of confusion between the claimants' marks and the defendants' signs arising out of the similarity between them and the services to which they related. In relation to the similarity of services, there was no real prospect of the court at trial finding otherwise than that the defendants' services related closely to the provision of gaming services by Ritz Online. The 'ritz' mark had a highly distinctive character because of its use and so confusion between it and the defendants' signs were more likely to be readily inferred so it was more probable that the public would associate the mark and the signs in their minds. Such association was likely to cause the public to wrongly believe that the services came from the same or economically linked undertakings. There was a substantial degree of similarity between 'ritz' and 'ritzpoker', 'ritzpoker.net', 'ritzpoker.org', 'ritzpoker.info' or 'ritzpoker.biz' and a (less substantial) similarity between 'ritz' and 'ritzypoker.co.uk' or 'ritzypoker.net'. Taking the above considerations into account, it was found that there was, in fact, no real prospect that the claimants would fail to establish at trial that there existed a likelihood of confusion and the application for summary judgment was granted.
Why this matters
With the increased use of the internet for activities such as gambling, shopping etc. it has become more important for brand-owners to protect and enforce their trade marks and other IP rights against web-based infringements. This may come as a change for many brand-owners, for whom checking on potential online infringements has not previously been part of their trade mark protection strategy. However, as Ritz has found, it undoubtedly pays to pay close attention to what is happening online.