WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Ltd. v. Dijitaldjs
Case No. D2001-1163
1. The Parties
Complainant is Harrods Limited London, a corporation organised and existing under the laws of England.
Respondent is Dijitaldjs, Riyadh, Saudi Arabia.
2. The Domain Name and Registrar
The domain name at issue is <wapharrods.com>. The registrar is NameSecure.com, Concord, California, USA.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") in hard copy on September 24, 2001, and subsequent in digital format on October 2, 2001. The WIPO Center sent an Acknowledgement of Receipt to the Complainant on September 24, 2001, and October 2, 2001, respectively.
On September 28, 2001, a Request for Registrar Verification was transmitted to the Registrar, NameSecure.com. On October 5, 2001, NSI confirmed on behalf of the Registrar that they were in receipt of the Complaint sent to them by the Complainant and that the domain name <wapharrods.com> was registered with them, The Registrar at the same time forwarded the requested WHOIS details.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on October 8, 2001. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in compliance with the requirements of the Uniform Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules").
The fees for a single-member Panel were paid on time and in the required amount by the Complainant.
All formal deficiencies having been cured, on October 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent by the required means, setting a deadline of October 28, 2001, by which the Respondent could file a Response to the Complaint.
On October 30, 2001, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties a Notification of Respondent Default.
On November 13, 2001, in view of the Complainantís designation of a single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited Knud Wallberg to serve as a panelist in the Case, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received on November 14, 2001, Knud Wallbergís Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted on November 15, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Knud Wallberg was formally appointed as the Sole Panelist. The Projected Decision Date was November 30, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Uniform Rules, the WIPO Supplemental Rules, but without the benefit of a Response from the Respondent.
4. Factual Background
For more than 150 years, that is since about 1849, the Complainant and its predecessors have operated the world-famous Harrods Department Store in the Knightsbridge area of London, England. The Complainantís flagship store is unique and highly prestigious. The store typically serves approximately 35,000 customers each business day, and it has become a "mandatory" stop for tourists visiting England. The Complainantís HARRODS trademarks have become synonymous with a wide variety of high-quality luxury products and services.
The Complainant has used, registered, or applied to register the mark HARRODS in many countries around the world for a wide variety of goods and services. For example, Complainant has used, registered, or applied to register its HARRODS mark for products such as tobacco; 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; 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.
In particular, the Complainant owns the following trademark registrations and applications:
(1) United States Trademark Registration No. 1,354,693, dated August 13, 1985, for the mark HARRODS for services in Class 42 including retail mail order services of consumer goods;
(2) United States Trademark Application Serial No. 15/751757, filed on July 15, 1999, for the mark HARRODS ONLINE for Class 35 services including online retail store services featuring general merchandise, published for opposition on January 23, 2001;
(3) United Kingdom Trademark No. 1266810, dated May 10, 1986, for the mark HARRODS for various goods in Class 16;
(4) United Kingdom Trademark No. 1274160, dated August 9, 1986, for the mark HARRODS for various goods in Class 9;
(5) United Kingdom Trademark No. 2245927, dated September 19, 2000, for the mark HARRODS for services in Class 35 including the bringing together for the benefit of others, of a variety of goods through online media enabling customers to conveniently view and purchase those goods which would normally be available in a departmental store through the said online media or by means of telecommunications;
(6) Community Trademark No. 62414, dated April 1, 1996, for the mark HARRODS for a wide variety of goods and services in 42 classes;
(7) Saudi Arabia Trademark No.225/2, dated February 20, 1990, for the mark HARRODS for a variety of goods in Class 3;
(8) Saudi Arabia Trademark No.225/3, dated February 20, 1990, for the mark HARRODS for a variety of goods in Class 14.
Trademark register print-outs, copies of the Trademark Registration Certificates and the pertinent information relating to the trademark applications was attached as Annexes to the Complaint.
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. Complainant is currently developing the <harrodsonline.com> site in order to sell Harrodsí merchandise in other parts of the world as well.
5. Partiesī Contentions
On February 14, 1999, that is, before the Respondent's registration of the Domain Name, the Complainant launched an Internet site accessible on the World Wide Web at <harrods.com>. The site features, inter alia, photographs and panoramic images of the Complainant's London store, information about the Complainant's history, and details and photographs of representative products available for sale through the website. Representative pages from this website were attached to the Complaint.
The Complainant also maintains a website at <harrodsonline.com>, which currently links to the <harrods.com> site, but will eventually offer to consumers in other parts of the world the means of placing purchase orders via the Internet for products available at the Harrods department store.
The Respondentís Registration and use of <wapharrods.com>
According to the WHOIS information, Dijitaldjs registered <wapharrods.com> (the "Domain Name") on September 1, 2000. To the best knowledge of the Complainant, the original registrar for the Domain Name was NameSecure.com, P.O. Box 27096, Concord, CA 94527, USA.
The Domain Name Is Identical or Confusingly Similar to the Trademarks In Which The Complainant has Rights
In the instant case, <wapharrods.com> is confusingly similar to the Complainantís famous HARRODS department store name and trademarks. The only difference between the Respondentís chosen domain name and the Complainantís trademarks is the addition of the word "wap" to the Harrods name. Given the fact that the HARRODS mark instantly evokes the famous Knightsbridge department store, adding "wap" merely suggests that Harrods goods and services are available on the Internet and/or via wap mobile telephones. The impression given to web users is that the Respondentís domain name and the Complainantís marks are one and the same, that is, that any associated goods or services are provided, sponsored, endorsed, or affiliated with the Complainant. Accordingly, the Respondentís chosen domain name suggest a false sense of origin or sponsorship for any associated goods or services, and was undoubtedly chosen by the Respondent in an effort to free-ride off the goodwill associated with Harrods, in which the Complainant enjoys exclusive rights.
The Respondent has No Legitimate Interests in the Domain Name
The Respondent cannot demonstrate any legitimate interests in the Domain Name. The 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 he in view of the fame of the Complainantís HARRODS trade marks, name and store. Nor is the Respondent making a legitimate non-commercial 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, the Respondent is merely "squatting" on the subject name and has made no active use thereof to date.
The Domain Name Was Registered and Is Being Used in Bad Faith
The Respondent has registered the Domain Name in a blatant attempt to capitalize unfairly on the fame of the HARRODS trademarks. Previous Panel decisions have explicitly held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy. Instead, Panels have held that when a registrant could not use the name without violating the Complainant's rights under the applicable law, bad faith exists even if the registrant has done nothing but register the name.
Similarly, if the Complainant's 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 this reputation. In Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, the Panel held that "<veuvecliquot.org> is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith." See also Empresa Brasileira de Telecomunicacoes S.A. Ė Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164 ("The 'passive holding' of the domain name <embratel.com> with absolute knowledge of the damages that such conduct causes to the legitimate owner of EMBRATEL trade mark constitutes a continuous 'use' with bad faith of the domain name"); Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 ("It would be difficult, perhaps impossible, for the Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainant's rights.").
The above cases also demonstrate that use of the domain names is unnecessary for a finding of bad faith. Accordingly, the Respondent has both registered and "used" the Domain Name in bad faith.
As mentioned above in section 3, the Respondent has not filed a Response in accordance with the Rules, Para. 5 and regrettably no other information on or by the Respondent has been presented to the Panel.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
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; and
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
Identical or confusingly similar
The domain name <wapharrods.com> contains the registered trademark HARRODS in its entirety. The domain name also contains, as a prefix, the word "wap", which is a commonly known acronym for "wireless application protocol". This is a technical protocol that enables extensive communications via mobile phones and must be considered as a purely descriptive word. This is also the case for the suffix ".com". Adding such generic terms as pre- or suffixes to a famous trademark and incorporate the combination into a domain name does not bring the case outside the scope of the Policy. See inter alia WIPO Case No. D2001-0331 <e-armani.org> et. al, WIPO Case No. D2001-0500 <budmovies.com>, <budscreensavers.com> et. al. and WIPO Case No. D2001-1115 <wwwnike.com>.
The Domain name is thus confusingly similar to the trademark HARRODS in which the Complainant has rights.
The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Further, the Respondent has not demonstrated that he has any prior rights or legitimate interests in the domain name, and it seems very unlikely that such interest could be demonstrated.
The prerequisites in the Policy, Paragraph 4(a)(ii), cf. 4 (c) are also considered fulfilled.
Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.
The trademark HARRODS is registered in may countries around the world including in the country of residence of the Respondent, Saudi Arabia. In addition the mark is world famous. The Panel, therefore, finds that it is unlikely that the Respondent did not know of the said mark when he registered the Domain Name. The registration of the domain name must be considered done in bad faith.
With regard to the present case, it is important to state that the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to someone else, in itself can be considered disrupting to the business of the rightholder. The Panel agrees that it is within the scope of the rights conferred to a trademark to regard "passive use" as "use", cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and several other subsequent decisions.
Bearing these facts and the above arguments in mind, the Panel finds that the domain name has been registered and is being used in bad faith, cf. Paragraph 4(a)iii and 4(b) of the Policy.
Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel decides, that the domain name registered by Respondent is identical or confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has not shown to have any rights or legitimate interests in respect of the domain name, and that the Respondentís domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <wapharrods.com> be transferred to the Complainant.
Dated: November 27, 2001