WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Peter Pierre
Case No. D2001-0456
1. The Parties
1.1 The Complainant is Harrods Limited, a U.K. private company limited by shares with its principal place of business located in London, United Kingdom.
1.2 The Respondent is Peter Pierre, an individual residing at 5344 North Valentine #201, Fresno, CA 93711, United States of America.
2. The Domain Names and Registrar
2.1 The domain names upon which this Complaint is based are <harrodsdepartmentstores.com> and <harrodsstores.com>. The registrar of the domain names as at the date of the Complaint is Network Solutions, Inc ("NSI").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on March 29, 2001, and in hard copy on April 3, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint states that a copy of the Complaint has been sent to the Respondent in accordance with paragraph 2(b) of the Rules and that a copy of the Complaint has been sent to the Registrar of the domain names in dispute, NSI.
3.3 On April 2, 2001, the Center sent the Complainantís representative an Acknowledgment of Receipt of Complaint.
3.4 The Center sent a Request for Registrar Verification to NSI on April 3, 2001, by email. NSI responded to the Centerís request by email on April 9, 2001, stating:
(a) that NSI was the registrar for the domain names in dispute;
(b) that the Respondent was the current registrant of the domain names in dispute;
(c) that the domain names <harrodsdepartmentstores.com> and <harrodsstores.com> were active;
(d) the Respondentís contact details; and
(e) that Network Solutionsí 5.0 Service Agreement was in effect.
3.5 The Panel notes that NSIís response to the Centerís Request for Registrar Verification did not confirm that NSI was in receipt of a copy of the Complaint, despite the Center asking NSI to do so in its Request for Registrar Verification. The Complaint states, at paragraph 35: "As required by the Rules and Supplemental Rules, a copy of this Complaint has been sent or transmitted to the concerned registrar, Network Solutions, on March 28, 2001 by first class mail".
3.6 In the absence of any relevant evidence, the Panel is of the view that the failure of NSIís response to the Centerís Request for Registrar Verification to confirm that NSI was in receipt of a copy of the Complaint was probably an oversight on the part of the individual at NSI who responded to the Centerís Request for Registrar Verification. In the Panelís experience, if at the time of receiving the Centerís Request for Registrar Verification a registrar has not received a copy of the Complaint in accordance with the Rules, the registrar states this in its response. The Panel has no reason to doubt the Complainantís assertion in paragraph 35 of the Complaint that a copy of the Complaint was sent to NSI on March 28, 2001. In any event, the Panel is satisfied that no unfairness has resulted to the Respondent by the fact that NSI did not confirm in its response that it was in receipt of a copy of the Complaint.
3.7 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on April 10, 2001, to the Respondent by post/courier (with enclosures), by facsimile (without attachments) and by email (without attachments), and to the Complainantís representative by email (without attachments).
3.8 A Notification of Respondent Default was sent by the Center to the Respondent and the Complainantís representative by email on May 1, 2001. This notified the Respondent that it had failed to comply with the relevant deadline for the submission of its Response in the domain name dispute. Although the Notification of Complaint and Commencement of Administrative Proceeding made specific reference to the 20 calendar day period within which the Respondent was entitled to submit a Response to the Complaint, no Response has been received from the Respondent at any time prior to the Panel commencing its deliberations.
3.9 The Center sent a Transmission of Case File to Administrative Panel by email on May 17, 2001. The documentation was received in hard copy by the Panel on May 21, 2001 in Sydney, Australia.
3.10 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint and remains uncontested.
For more than 150 years, since 1849, the Complainant and its predecessors have operated the world-famous Harrods Department Store in the Knightsbridge section of London, England. The Complainantís flagship Harrods store is unique and highly prestigious. The store typically serves approximately 35,000 customers each business day, and it has become a Ďmandatoryí stop for virtually all tourists visiting England.
4.2 The Complainantís trade marks
The Complainant also asserts that it has used, registered or applied to register the mark HARRODS in the United States Patent and Trademark Office and around the world for a wide panoply of goods and services. In particular, the Complainant owns United States Trademark Registration No. 1,354,693 dated August 13, 1985 for the mark HARRODS for retail mail order services of consumer goods; United States Application Serial No. 75/751757, filed on July 15, 1999 for the mark HARRODS ONLINE for online retail store services featuring general merchandise, published for opposition on January 23, 2001; and Community Trade Mark No. 62414, dated April 1, 1996, for the mark HARRODS for various goods and services in twenty-seven different classes.
The Complaint states that as a result of the quality of the Complainantís goods and services, the tremendous volume of its customers, and the extensive advertisement and promotion of the HARRODS mark, the HARRODS mark is famous, has acquired substantial goodwill belonging exclusively to the Complainant, and has come to be and is recognized as an indicia of origin exclusively identified with the Complainant.
The Complainant also owns and uses two domain names, <harrods.com> and <harrodsonline.com> providing access to web sites that offer Harrodsí merchandise for sale in the U.K.
4.3 Activities of the Respondent
As stated above, no Response to the Complaint has been filed and no information has been made available by the Respondent to the Panel concerning the activities of the Respondent. The Complainant states, however, at paragraph 22 of the Complaint, that according to the WHOIS database maintained by NSI, the Respondent has registered other "famous" names, including <fordcompanyelectriccars.com>, <mitsubishielectriccars.com>, <chryslercompanyelectriccars.com> and <nissanelectriccars.com>.
5. The Complainantís contentions in the Complaint
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the domain names in dispute are identical or confusingly similar to the Complainantís HARRODS and HARRODS ONLINE trade marks. The Complainant asserts that the only difference between the Respondentís chosen domain names and the Complainantís trade marks is the addition of "departmentstores" and "stores" to the Harrods name, and that given the fact that the HARRODS marks instantly evoke the famous Knightsbridge department store, adding "departmentstores" or "stores" is merely redundant.
The Complainant contends that the commercial impression conveyed is that the Respondentís domain names and the Complainantís marks are one and the same, that is, any associated goods or services are sponsored, endorsed or affiliated with Harrods; and that the Respondentís chosen domain names suggest a false sense of origin or sponsorship for any associated goods or services, and were undoubtedly chosen by the Respondent in an effort to free-ride off of the goodwill associated with Harrods, in which the Complainant enjoys exclusive rights and/or for the purpose of selling the domain names to the Complainant for valuable consideration in excess of the Respondentís out-of-pocket costs.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent cannot demonstrate any legitimate interests in the disputed domain name; that the Respondent has not used or made any demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services, and he could not do this given the fame of the Complainantís name and store. The Complaint states that the Respondent is not making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademarks at issue.
5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the Respondent has registered the domain names in dispute in bad faith.
In support of this assertion, the Complaint states the following:
(a) the Respondent registered the domain names in a blatant attempt to capitalise unfairly on the fame of the HARRODS trademarks;
(b) the Complainant sent the Respondent a protest letter at the address listed in the WHOIS printout. Because this letter was returned as undeliverable, the Complainant then hired a trade mark investigation company to obtain factual information about the Respondent. When contacted under the guise of purchasing <harrodsdepartmentstores.com> and <harrodsstores.com>, the Respondent represented that he was currently negotiating a deal with Harrods to use the domain names to sell retail goods through the Internet. When asked the amount he was requesting for the domain names, the Respondent replied that Harrods had offered him between $250,000 and $275,000 but they were in the process of negotiating. When asked again about the price, the Respondent replied that it all depended on the offer, but that he would sell the domain names for between $70,000 and $100,000. When asked about the $250,000 allegedly offered by Harrods, the Respondent replied that there was no guarantee that Harrods would give him that amount and he would accept a certain $100,000 because Harrods might change its mind in the future. The Complainant contends that the Respondentís representations regarding his negotiation with Harrods are false because the Complainant has had no contact whatsoever with the Respondent.
(c) the Respondentís registration of numerous domain names demonstrates a bad faith pattern of engaging in a pattern of registering domain names featuring the well-known trade marks of others, such as "Chrysler", "Ford" and "Nissan", which compels the conclusion that the registrantís business is to acquire and sell domain names for a profit.
(d) if the Complainantís mark is distinctive, as in the case of the HARRODS mark, bad faith is found if it is unlikely that the registrant would have selected the domain name without knowing of its reputation.
6. Discussion and Panel Findings
6.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
6.2 Domain Names identical or confusingly similar to Complainantís trade mark
The domain names in dispute are <harrodsdepartmentstores.com> and <harrodsstores.com>. The Complainant has United States and Community trade mark registrations and applications of the words "HARRODS" and "HARRODS ONLINE".
The domain names in dispute and the Complainantís trade mark are not identical, and the issue is therefore whether the domain names and the mark are confusingly similar.
As far as a comparison between the disputed domain names and the Complainantís trade mark "HARRODS" is concerned, the addition of the words "departmentstores" and "stores" to the word "harrods" in the disputed domain names has, in the Panelís view, minimal impact on what the viewer focuses on, namely, the word "harrods". In the Panelís opinion, the Respondent has deliberately added the words "departmentstores" and "stores" to the word "harrods" in the disputed domain names because, as the Complaint asserts, the Complainantís "HARRODS" trade mark is well-known around the world in connection with the Complainantís famous department store.
This Panelís view, consistently expressed in its prior decisions, is that common nouns are rarely distinguishing elements. Where, as here, the common noun selected coincides with and in fact connotes if not denotes precisely the goods or services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable.
In each of Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd, Case No. D2001-0110 (WIPO Arbitration and Mediation Center, April 2, 2001) in respect of the domain name <ansellcondoms.com>; Christieís Inc. v. Tiffanyís Jewelry Auction Inc., Case No. D2001-0075 (WIPO Arbitration and Mediation Center, March 6, 2001) in respect of the domain name <christiesauction.com>; and Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, Case No. D2001-0020 (WIPO Arbitration and Mediation Center, March 22, 2001) in respect of the domain name <guinessbeer.com>, the second element of each domain name represented the goods or services in respect of which each Complainantís trade mark had been registered, and those goods or services which the general public would associate with that trade mark. Rather than removing or reducing the risk of confusing similarity from the domain names when compared with the trade marks in question, in such situations confusing similarity was regarded as inevitable.
The gTLD suffix ".com" forming part of the domain names in dispute has no relevant distinguishing function.
The Panel also infers that the domain names <harrodsdepartmentstores.com> and <harrodsstores.com> were chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any web site to which the domain names might resolve. The Panel in any event finds that the disputed domain names are confusingly similar to the Complainantís "HARRODS" trade mark and that the Complainant has proven paragraph 4(a)(i) of the Policy.
6.3 The Respondent has no rights or legitimate interests in the Domain Names
The Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain names and, as stated above, the Respondent has provided no information to the Panel asserting any right or legitimate interest it has in the disputed domain names. It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business.
Paragraph 4(c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondentís rights or legitimate interests in the domain name. However, there is no evidence whatsoever before the Panel that any of the situations described in paragraph 4(c) of the Policy apply in the case of the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.
6.4 Domain Names have been registered and are being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. Paragraph 4(b) of the Policy provides:
"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith".
In this case, although NSI has confirmed that the domain names <harrodsdepartmentstores.com> and <harrodsstores.com> are currently active, both domain names resolve to a web page stating that the domain name is registered with Network Solutions and that the site is currently under construction.
In some cases it has been found that it is unnecessary to consider the two limbs of the provision separately, as the "use" requirement has been found not to require positive action, inaction being within the concept. In this case the direction/redirection to the "under construction" web page is sufficient to satisfy the "use" element and is not regarded by the Panel as "inaction" - the implication is that the registrant of the domain names is in the process of building more relevant web pages.
6.5 The Complainant cites four bases for its contention that the domain names in dispute have been registered in bad faith by the Respondent: first, because the Respondent wished to capitalise unfairly on the fame of the HARRODS trademarks; secondly, because the Respondent falsely represented to a trade mark investigator hired by the Complainant that he was in negotiations with the Complainant for the sale of the domain names; thirdly, because a search of the NSI website reveals that the Respondent owns numerous top level domain names; and fourthly, because it is unlikely that the registrant would have selected the domain names without knowing of the reputation of the Complainant and its marks.
6.6 Paragraph 4(b) of the Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) 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 or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
6.7 The word "harrods" is obviously a well-known mark used by the Complainant in its day-to-day business. Its use by someone with no connection with the Complainant suggests opportunistic bad faith. In the Panelís opinion, the disputed domain names were registered by the Respondent for either of the reasons outlined in sub-paragraphs 4 (b) (i) and (ii) of the Policy, and, if the domain names will at some point in the future resolve to active web sites (which are currently "under construction"), then the domain names in dispute may also have been registered for the reason outlined in sub-paragraph 4 (b) (iv) of the Policy.
The Panel is not aware of any actual offer made by the Respondent to the Complainant to sell, rent or otherwise transfer the disputed domain names to the Complainant. However, in the meeting which took place between the Respondent and the trade mark investigator hired by the Complainant the Respondent allegedly represented that he had offered to sell the disputed domain names, whether to the Complainant or an unrelated third party, for consideration far in excess of his out-of-pocket expenses incurred in registering the domain names. It would not be unreasonable to treat the Respondent as having done just that, although the Panel does not do so as there are other grounds made out by the Complainant. The Complainant has shown that the Respondent is the owner of numerous top level domain names. The Respondent has not put forward any evidence that he has legitimate rights or interests in the disputed domain names, or the numerous other top level domain names that have been registered by him, and that the Complaint has cited.
In light of the above, the Panel concludes that it is likely that the Respondent is in the business of speculatively registering domain names in which he has no legitimate right or interest for the purpose of seeking to sell them to corresponding trade mark owners for consideration in excess of the out-of-pocket expenses he has incurred in registering the domain names.
6.8 The Panel is of the view that the domain names in dispute were registered and are being used in bad faith by the Respondent at least at the time of the Complaint. Accordingly, the Panel finds that the Complainant has proven paragraph 4(a)(iii) of the Policy.
7.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 4(i) of the Policy, the Panel orders that the domain names <harrodsdepartmentstores.com> and <harrodsstores.com> be transferred by NSI to the Complainant, Harrods Limited.
Philip N. Argy
Dated: June 6, 2001