WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Harrods Limited v Robert Boyd

Case No. D2000-0060

 

1. THE PARTIES

1.1. The Complainant is Harrods Limited, a private company organised under the laws of the United Kingdom, with its principal place of business located in London in the United Kingdom.

1.2. The Respondent is Robert Boyd, of 207 Alberta Street, Dayton, Ohio 45414, United States of America.

 

2. THE DOMAIN NAME AND REGISTRAR

2.1. The domain name at issue is <dodialfayed.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").

 

3. PROCEDURAL HISTORY

3.1. A complaint was submitted electronically by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on February 13, 2000. The signed original, together with four copies, forwarded by courier under cover of a letter dated February 11, 2000, was received by WIPO Center on February 14, 2000. An acknowledgment of receipt was sent by WIPO Center to the Complainant on February 15, 2000.

3.2. On February 15, 2000 a request for Registrar verification was transmitted by WIPO Center to NSI, requesting it to:

3.2.1. Confirm that a copy of the complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).

3.2.2. Confirm that the domain name at issue is registered with NSI.

3.2.3. Confirm that the person identified as the Respondent is the current registrant of the domain name.

3.2.4. Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

3.2.5. Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect at the time of the registration of the domain name.

3.2.6. Indicate the current status of the domain name.

3.3. By email dated February 15, 2000, NSI advised WIPO Center as follows:

3.3.1. NSI had not received a copy of the complaint from the Complainant.

3.3.2. NSI is the Registrar of the domain name registration <dodialfayed.com>.

3.3.3. Robert Boyd is the current registrant of the said domain name. His relevant information is shown as follows:

Robert Boyd (DODIALFAYED3-DOM)
207 Alberta Street
Dayton, OH 45410
US

Administrative Contact:
Williams, Amy (AW7851) wamy171244@AOL.COM
937 2232191

Technical Contact, Zone Contact:
Verio Hostmaster (VH175-ORG) VerioHostmaster@TABNET.COM
707-256-1999
Fax 707-256-1997

Billing Contact:
Williams, Amy (AW7851) wamy171244@AOL.COM
937 2232191

3.3.4. NSIís 4.-0 Service Agreement is in effect.

3.3.5. The domain name registration <dodialfayed.com> is in "Active" status.

3.4. NSI provided a copy of its service agreement with the Respondent and of its Domain Name Dispute Policy. NSIís service agreement explicitly informed the Respondent "that this Agreement explains our obligations to you, and your obligations to us in relation to use of our services". It further provides:

"8. DOMAIN NAME DISPUTE POLICY. If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference. The current version of the dispute policy may be found at our Web site:
http://www.networksolutions.com/legal/dispute-policy.html."

3.5. The Agreement also states, in pertinent part, that NSIís domain name dispute policy may be modified:

"9. DOMAIN NAME DISPUTE POLICY MODIFICATIONS. You agree that we, in our sole discretion, may modify our dispute policy. We will post any such revised policy on our Web site at least thirty (30) calendar days before it becomes effective. You agree that, by maintaining the reservation or registration of your domain name after modifications to the dispute policy becomes effective, you have agreed to these modifications. You acknowledge that if you do not agree to any such modification, you may terminate this AgreementÖ."

3.6. The version of the dispute policy in effect at the time that the domain name was registered by the Respondent similarly provided:

"5. Modifications. The registrant hereby acknowledges that Network Solutions may modify or amend this Policy from time to time, and that such changes are binding upon the registrant. Network Solutions will post the revised Policy at http://www.netsol.com/rs/dispute-policy.html at least thirty (30) days before it becomes effective."

3.7. With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of NSI that the domain name in question is still "active", the Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

3.8. Having verified that the complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center on February 16, 2000 transmitted by facsimile a notification of Complaint and Commencement of Administrative Proceedings to the Respondent care of VerioHostmaster, his technical contact/zone contact. On the same date, email copies of the above documents were sent to Postmaster@dodialfayed.com, VerioHostmaster@tabnet.com and wamy171244@aol.com. These addressees were advised that the communications were for the attention of the Respondent. A copy of the complaint was also emailed to NSI and ICANN.

3.9. The Panel has independently determined and agrees with the assessment of WIPO Center that the complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

3.10. The Complainant elected to have its complaint resolved by a single panel member: it has duly paid the amount required of it to WIPO Center.

3.11. The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by March 6, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

3.12. Contrary to these requirements, the Respondent replied to WIPO Center only by an email dated February 27, 2000. This email emanated from wamy171244@aol.com. In a brief document, the Respondent claimed that he had searched the US Patent and Trademark database and "come up with no trademark listed for Dodi al Fayed or Dodi Fayed or Fayed or Al". He referred to attachments to his email, but these were unable to be retrieved by WIPO Center.

3.13. WIPO Center on March 2, 2000 emailed the Respondent at the address from which he had earlier communicated, requesting him to fax the documents referred to in his email of February 27, 2000 and warning him that the last date for his response was March 6, 2000. No further response has been received.

3.14. On March 6, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.

3.15. On March 7, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence.

3.16. On March 9, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on March 13, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by March 22, 2000.

3.17. The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. FACTUAL BACKGROUND

4.1. The Complainant has provided evidence of the registration of the following mark:

Trademark DODI FAYED. It is owned by the Complainant, Harrods Limited, and was registered as a European Community Trademark on January 12, 1999 under EU Trademark Registration No. 648444.

There was no evidence that registration of this trademark had been sought in the United States.

4.2. According to the WHOIS information supplied by the Complainant, Robert Boyd registered the <dodialfayed.com> domain name on October 15, 1999. The Respondent is not a licensee of the Complainant, nor is he authorised otherwise to use the Complainantís mark.

4.3. After registering the domain name, the Respondent placed the domain name for sale at an auction Web site (<GreatDomains.com>). A copy of his offer for sale was downloaded by the Complainant on January 13, 2000. The offer showed an asking price of US$400,000.

 

5. PARTIESí CONTENTIONS

5.1. The Complainant contends that the Respondent registered the domain name <dodialfayed> in a blatant attempt to capitalise unfairly on the fame of and public interest in the late Mr Emad Mohamed al-Fayed, widely known as Dodi. He was the son of Mr Mohamed al-Fayed, the owner of the Complainant. Dodi was a director of the Complainant. He was killed in Paris on 31 August 1997, together with Diana, Princess of Wales, in a car crash that received worldwide publicity. Both before and after his death, Dodi was well-known in many parts of the world. Since his death, there have been widespread investigations into and public debate over the cause of the crash which killed him and Princess Diana. These circumstances, the Complainant alleges, would attract considerable traffic to a Web site using Dodiís name. The Complainant contends strongly that the Respondent is using the name in bad faith, since there is no suggestion that he had any connection with the late Dodi or is himself known by a similar "nickname".

5.2. The Respondent did not contest the allegations of the Complainant. As noted, his only statement was that a search of the US trademarks and patents database did not come up with this trademark. I am unable to comment on the accuracy of that statement. However, the Complainant owns a European Community trademark. Given that Dodi had close associations with the United Kingdom and other nations in the European Union, one would have thought that a prudent search of patents and trademarks would include a register which recorded trademarks and patents registered in the European Union.

 

6. DISCUSSION AND FINDINGS

6.1. Paragraph 15(a) of the Rules instructs the 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".

6.2. The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

6.2.1. That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

6.2.2. That the Respondent has no legitimate interests in respect of the domain name.

6.2.3. The domain name has been registered and used in bad faith.

6.3. In my view, the domain name <dodialfayed.com> is confusingly similar to the Complainantís trademark, DODI FAYED. The letters "al" reflect only a more formal version of the name "Dodi Fayed". The commercial impression is that the domain name is associated with goods and services sponsored by or affiliated with the late Dodi Fayed or his estate.

6.4. It is also clear that the Respondent has no right or legitimate interest in respect of the domain name. He has since offered to sell it for a large sum of money.

6.5. The domain name must not only be registered in bad faith, but must also be used in bad faith. In determining whether it has been so used, I adopt with respect the reasoning set out by the learned Panelist, Mr M Scott Donahey, in World Wrestling Federation Entertainment Inc. v Michael Busman, Case No. D 99-001. That was a case where the Respondentís domain name, registered in Australia, was identical to a service mark and trademark of the Complainant registered in the United States. The Respondent there had offered to sell the domain name to the Complainant "for valuable consideration in excess of out-of-pocket expenses".

6.6. It is legitimate under paragraph 15(a) of the Rules that the Panel should look at principles of law deemed applicable. Since the Respondent is domiciled in the United States, and any legal action would have to be taken against him in that country, it is therefore helpful to look at principles of law set out in decisions of Courts in the United States.

6.7. The learned Panelist in the World Wrestling case pointed out that it was clear from the legislative history that ICANN intended proof of use in bad faith as well as of registration before the streamlined procedure could be invoked. However, paragraph 4(b)(i) of the ICANN policy document states:

"the following circumstances Ö shall be evidence of the registration and use of the domain name in bad faith Ö Circumstances indicating that you have registered or you have 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 for valuable consideration in excess of the documented out-of-pocket costs directly relating to the domain name."

6.8. There is no evidence of any direct approach to the Complainant by the Respondent. However, the Respondentís offering to the world the domain name <dodialfayed> for sale at an asking price of US$400,000 demonstrates the Complainant as his logical target. The Complainant owns the trademark, DODI FAYED, and the late Dodi was a director of the Complainant, which is owned by Dodiís father, Mr Mohamed al-Fayed. Mr Mohamed al-Fayed has personally been involved in public tributes to Dodi and Princess Diana, as well as in making well-publicised efforts to investigate how they were killed. It strains belief that the Respondent was unaware of these matters.

6.9. Like the Panelist in the World Wrestling case, I note the Court decisions in the United States, i.e., Panavision International LP v Dennis Toeppen et al 141 F 3d 1316 (9th Circuit) 1998 and Intermatic Inc v Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) as supporting the views that I have taken. In the Panavision case, the Respondent there was characterised as a "spoiler" who prevented the trademark holder from doing business on the Internet under its trademark name unless it paid the Respondentís fee.

 

7. DECISION

7.1. For the foregoing reasons, the Panel decides:

(a) that the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and

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

7.2. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <dodialfayed.com> be transferred to the Complainant.

 


 

Hon Sir Ian Barker QC
Presiding Panelist

Date: March 16, 2000