WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Harrodís Closet
Case No. D2001-1027
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, England.
1.2 The Respondent is, based on WHOIS information provided to the Registrar of the Domain Names at issue, Harrodís Closet, located at 1250 Timberbranch Court, Charlottesville, Virginia 22902, USA. To the best of Complainantís knowledge, Harrodís Closet is a pseudonym used by two individuals, Parker Cassidy and Lisa Romano, both of whom reside in Virginia in the United States, to function as a name for a Domain Name Registrant.
2. The Domain Name and Registrar
2.1 The Domain Name, the subject of this dispute, is
2.2 The Domain Name is registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170, Tel: (703) 742-0400; <www.networksolutions.com>.
3. Procedural History
3.1 The Complaint was filed electronically on August 14, 2001, and in hard copy on August 21, 2001.
3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.
3.3 No legal proceedings have been initiated, as yet. (Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), paragraph 3(b)(xi)).
3.4 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD1,500.00 has been made by check, payable to World Intellectual Property Organization.
3.5 The Complainant agreed that its claim and remedies concerning the registration of the Domain Name, the dispute, or the disputeís resolution shall be solely against the Domain Name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned Registrar, (c) the Registry Administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees and agents.
3.6 A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the Respondent on August 14, 2001, both by electronic means via the Internet to Respondent at "email@example.com" and at "firstname.lastname@example.org", and by postal service, postage pre-paid and return receipt requested pursuant to Rules, paragraph 2(b).
3.7 A copy of this Complaint has been sent to the concerned Registrar, Network Solutions, Inc., on August 14, 2001, by first class mail.
3.8 On August 15, 2001, the WIPO Arbitration and Mediation Center ("the Center") transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case and on August 16, 2001, the Center received a verification response confirming that the domain names are registered with Network Solutions, Inc. and that the Registrant for the domain names is the Respondent.
3.9 On August 23, 2001, Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the Center informing the Respondent that an Administrative Proceeding had been commenced by Complainant in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). On September 13, 2001, the Respondent was determined to be in default for failing to submit a Response.
3.10 The single Panel member, Cecil O.D. Branson, Q.C., submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on September 21, 2001, in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by October 5, 2001.
3.11 The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
4. Factual Background
4.1 The following facts were asserted by the Complainant, were uncontested, and this Panel finds them to be proven in this case.
4.2 The Complainant 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. For example, Complainant has used, registered, or applied to register its HARRODS mark for products such as: tobacco; jewelry; leather goods; bed linen and textiles; beer, wine, liquor, and non-alcoholic drinks; meat, fish, poultry, and game; coffee and tea; footwear, headwear and clothing for children, men and women; Christmas tree ornaments and toys; cleaning products; furniture; fuels and illuminants; and swords, razors and cutlery; and for services such as: cafeterias, fashion consultation, photography, beauty and hairdressing salons, banking and brokerage services, real estate management, and insurance.
4.3 Harrods inter alia owns the valid and subsisting United States Trademark Registration No. 1,354,693, dated August 13, 1985, for retail mail order services of consumer goods in connection with the HARRODS mark, and Registration No. 2,443,875, dated April 17, 2001, for the mark HARRODS ONLINE in connection with online retail services featuring general merchandise. In addition, Harrods owns the valid and subsisting United States Trademark Registration No. 2,115,836, dated November 25, 1997, for the mark HARRODS in connection with footwear, headwear and clothing for children, men and women, and United Kingdom Registration No. 1,266,813 dated May 10, 1986, for the mark HARRODS for use with articles of clothing.
4.4 Complainant also owns and uses two Domain Names, <harrods.com> and <harrodsonline.com>, to provide access to web sites that offer Harrodsí merchandise for sale in the U.K. Harrods is currently developing the <harrodsonline.com> site in order to sell Harrodsí merchandise in the United States and Canada as well.
4.5 On February 14, 1999, prior to the Respondentís registration of the Domain Names, Complainant launched an Internet site accessible on the World Wide Web at <harrods.com>. The site features, inter alia, photographs and panoramic images of Complainantís London store, information about Complainantís history, and details and photographs of representative products available for sale through the website.
4.6 On November 9, 1999, Complainantís exclusive licensee for Internet sales launched the HARRODS ONLINE service, that offers to consumers in the United Kingdom and Japan via the Domain Name "harrodsonline.com" the means of placing purchase orders via the Internet for HARRODS-branded products and other products available through Complainantís HARRODS department store. Complainantís exclusive licensee is currently developing the HARRODS ONLINE service in order to sell Harrodsí merchandise in Canada and the United States as well.
4.7 Respondent registered <harrodscloset.com> on January 6, 2000, the Registrar being Network Solutions, Inc.
4.8 On December 29, 2000, on behalf of the Complainant a protest letter was sent to the authorized representatives of Respondent, known as "Harrodís Closet", via registered mail at the address for Respondent listed in the WHOIS print-out, requesting that Respondent contact Complainant with regard to the Domain Name upon receipt of the protest letter. This letter was returned to Complainant as "unclaimed" but indicated on it that the correct address for Respondent was 1250 Timberbranch Court, Charlottesville, Virginia 22902. On January 31, 2001, Complainant sent another protest letter to representatives of Respondent, known as "Harrodís Closet", at the correct address via Federal Express, requesting that Respondent contact Complainant with regard to the Domain Name upon receipt of the protest letter. Respondent was in receipt of such letter but failed to contact Complainant in order to assert rights to the Domain Name or to consent to the transfer of such Domain Name, or otherwise.
5. Partiesí Contentions
5.1 The Complainant contends that the Domain Name <harrodscloset.com> is evocative of, and confusingly similar to, Complainantís famous HARRODS department store name and many product trademarks. It says that the addition of "closet" to the Harrods name is of no consequence and that Complainant continues to use the HARRODS mark for the sale of footwear, headwear and clothing for children, men and women; bed linen and textiles; and fashion consultation services at its famous Knightsbridge department store and throughout the world. As a result, the Complainant contends, the commercial impression conveyed by Respondentís Domain Name is that any associated goods or services, namely footwear, headwear and clothing, are sponsored, endorsed, or affiliated with Harrods.
5.2 Accordingly, the Complainant states, the Respondentís chosen Domain Name suggests a false sense of origin or sponsorship for any associated goods or services, and was undoubtedly chosen by Respondent in an effort to free-ride off of the goodwill associated with the distinctive Harrods name, in which Complainant enjoys exclusive rights, and/or for the purpose of selling the Domain Name to the Complainant for valuable consideration in excess of Respondentís out-of-pocket costs, contrary to the Policy, paragraph 4(a)(i).
5.3 Complainant contends that Respondent has no rights or legitimate interest in the Domain Name <harrodscloset.com> pursuant to the Policy, paragraph 4(a)(ii).
5.4 According to the Complainant, the Respondent cannot demonstrate any legitimate interests in the Domain Name. Respondent has not used or made any demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services, nor could Respondent, in view of the fame of Complainantís HARRODS mark and store. Nor is Respondent making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademarks at issue; in fact, Respondent is merely "squatting" on the subject name and has made no active use thereof to date.
5.5 The Complainant says that the Respondent has registered the Domain Name without any bona fide basis for such registration, in an attempt to capitalize unfairly on the fame of the Harrods trademarks owned by Complainant.
5.6 Complainant says, and this Panel accepts, that the Complainant has no association with Respondent, and Complainant has not granted either its permission, authority or consent to Respondent to register the distinctive Harrods name and mark as a Domain Name, in any form whatsoever.
5.7 Complainant says, and this Panel accepts as a fact, that Respondent has registered the Domain Name without any bona fide basis for such registration, in an attempt to capitalize unfairly on the fame of the Harrods trademarks owned by Complainant.
5.8 The Respondent did not reply to the Complaint or otherwise participate in the proceedings.
C. No Other Submissions
5.9 The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. (Taking note of the Respondentís default in responding to the Complaint).
6. Discussion and Findings
6.1 The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and Network Solutions, Inc. which incorporates, by reference, the Policy in effect at the time of the dispute. The Policy requires that Domain Name Registrants such as Respondent submit to a mandatory Administrative Proceeding regarding third-party allegations of abusive Domain Name registration (Policy, paragraph 4(a)).
6.2 Such Administrative Proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abusive Domain Name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(k)).
6.3 The Policy, and the Rules, establish procedures intended to assure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
6.4 The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
6.5 Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
6.6 Failure on the part of a Respondent to file a Response to the Complaint permits an inference that Complainantís allegations are true and that the Respondent knows its web site is misleading. (See Talk City, Inc. v. Michael Robertson WIPO Case No. D2000-0009; EAuto L.L.C. v. EAuto Parts WIPO Case No. D2000-0096; Hewlett-Packard Co. v. Full System FA 0094637; David G. Cook v. This Domain is For Sale FA 0094957; Gorstew Jamaica and Unique Vacations Inc. v. Travel Concierge FA 0094925; America Online Inc. v. Anson Chan WIPO Case No. D2001-0004; Reuters Limited v. Global Net 2000 Inc WIPO Case No. D2000-0441.) Where Respondent has not filed a Response to the Complaint, in the absence of exceptional circumstances, under paragraph 5(e) of the Rules, the Panel shall decide the dispute based on the Complaint. (See Telstra Corporation Ltd v. David Whittle WIPO Case No. D2001-0434; Hewlett-Packard Co. v. Full System FA 0094637; David G. Cook v. This Domain is For Sale FA 0094957; Gorstew Jamaica and Unique Vacations Inc. v. Travel Concierge FA 0094925). It may also permit a Panel to infer that the Respondent does not deny the facts which the Complainant asserts nor the conclusions which the Complainant asserts can be drawn from those facts. (See Reuters Ltd. v. Global Net 2000, Inc WIPO Case No. D2000-0441; Hewlett-Packard Co. v. Full System FA 0094637; David G. Cook v. This Domain is For Sale FA 0094957; Gorstew Jamaica and Unique Vacations Inc. v. Travel Concierge FA 0094925; America Online, Inc. v. Andy Hind WIPO Case No. D2001-0642).
In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative Proceeding that each of the three elements of paragraph 4(a) are present:
(i) 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; and
6.7 The uncontradicted evidence of the Complainant satisfies the Panel that the Respondent has registered a Domain Name which is identical or confusingly similar to the Complainantís registered trademark.
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
6.8 The Respondent has not asserted any rights or legitimate interests in respect to the Domain Name in question. While the burden of proof in this regard is on the Complainant (See America Online Inc. v. Anson Chan WIPO Case No. D2001-0004, and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" WIPO Case No. D2000-0847), the Panel may draw an inference that Complainantís allegations are true where the Respondent has failed to submit a Response (See Reuters Limited v. Global Net 2000, Inc. WIPO Case No. D2000-0441). An inference in favor of the Complainant may be drawn in this regard where there is no evidence that the Respondent has been commonly known by the Domain Name (America Online Inc. v. Anson Chan WIPO Case No. D2001-0004). It has been held in an earlier Panelís decision that the absence of any license or permission from a Complainant for the Respondent to use any of its trademarks or to apply for or use any Domain Name incorporating any of those marks is evidence of the lack of a Respondentís rights or legitimate interests in the Domain Name. (See Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003). This Panel finds that on a preponderance of evidence before it the Respondent has no rights or legitimate interests in respect of the Domain Name <harrodscloset.com>.
(iii) that the Domain Name has been registered and is being used in bad faith.
6.9 It has been held by a previous Panel that where the Complainantís mark is so obviously connected with well-known products its very use by someone with no connection to these products can suggest opportunistic bad faith. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. WIPO Case No. D2000-0163.)
6.10 The passive holding of the Domain Name for a significant period with knowledge of the Complainantís trademark rights in the name has been held to constitute bad faith. (See Arturo Salice S.p.A. v. Paul Izzo & Company WIPO Case No. D2000-0537; Petland, Inc. v. COM.sortium, LLC WIPO Case No. D2001-0430; Michael J. Feinstein v. PAWS Video Productions WIPO Case No. D2000-0880; Empresa Brasileira de Telecomunicações S.A. Ė Embratel v. Kevin McCarthy WIPO Case No. D2000-0164).
6.11 For the above reasons, this Panel finds that the Domain Name <harrodscloset.com> has been registered and is being used in bad faith.
7.1 For the foregoing reasons, the Panel finds that the Complaint has satisfied the applicable standard of proof, which must be met by the Complainant, which is a preponderance of the evidence. (See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" WIPO Case No. D2000-0847; America Online, Inc. v. Anson Chan WIPO Case No. D2001-0004).
7.2 The ruling of this Panel is that the registration of the Domain Name <harrodscloset.com> be transferred to the Complainant.
Cecil O.D. Branson, Q.C.
Dated: September 28, 2001