WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Walter Trautner
Case No. D2001-1164
1. The Parties
Complainant is HARRODS LIMITED, a UK private company, with its principal place of business located in London (Knightsbridge), England ("Complainant"). Complainant's authorized representative is Hammond Suddards Edge, with offices in London, England.
Respondent is WALTER TRAUTNER, ISV Plate-Trautner GmbH, with address in Essen (Meisenburgstraße 44), Germany ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is <harrodsactual.com> ("the Domain Name"). The Registrar is Network Solutions Inc., Herndon, Virginia VA, United States of America ("the Registrar").
3. Procedural History
The Complaint, in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Complaint"), was filed with the World Intellectual Property Organisation Arbitration and Mediation Center ("the WIPO Center") on September 24, 2001. The electronic version of the Complaint was received on October 2, 2001. An Acknowledgement of Receipt was sent by the WIPO Center to Complainant by e-mail on September 26, 2001.
On September 28, 2001, a Request for Registrar Verification was transmitted to the Registrar. On October 1, 2001, the Registrar confirmed by e-mail that the Domain Name is registered with it and that Respondent is the current registrant of the Domain Name.
On October 3, 2001, a Notification of Complaint and Commencement of Administrative Proceedings ("the Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline on October 23, 2001, by which Respondent could make a Response to the Complaint.
Respondent did not file a Response, and on October 25, 2001, the WIPO Center sent a Notification of Respondent Default to Respondent.
On November 5, 2001, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist.
4. Factual Background
Since about 1849 the Complainant and its predecessors have operated the Harrods department store in the Knightsbridge area of London, England.
Complainant has used, registered or applied to register the mark "HARRODS" ("the HARRODS Mark") in many countries around the world for a wide variety of goods and services.
Complainant owns and uses the domain name <harrods.com>, providing access to a website that offers Harrods merchandise for sale. Complainant also owns the domain name <harrodsonline.com>, but this domain name currently does not revolve to a website.
Respondent registered the Domain Name on June 4, 2000.
The Domain Name currently does not revolve to any website. The corresponding URL generates a "host was not found" report.
5. Applicable Rules
Paragraph 4(a) of the Policy directs that Complainant, to obtain the requested remedy, must prove each of the following:
(i) that the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
6. Parties’ contentions
Complainant states that the HARRODS Mark is (world) famous, has acquired a substantial goodwill and has come to be and is recognised as an indicia of origin exclusively identified with Complainant.
Complainant contends that Respondent has registered other "famous" domain names.
The grounds for the Complaint are:
1. Complainant states that the Domain Name is confusingly similar to the HARRODS Mark. The adding of the word "actual" to the HARRODS Mark merely suggests that the website is a genuine Harrods site. The impression given to web users is that Respondent's Domain Name and the HARRODS Mark are one and the same, that is, that any associated goods or services are provided, sponsored, endorsed or affiliated with Complainant.
2. Complainant states that Respondent has no rights or legitimate interests in respect of the Domain Name, as he 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. In view of the fame of Complainant's HARRODS Mark, Respondent could not make a legitimate non-commercial or fair use of the Domain Name. Respondent is, according to Complainant, merely squatting on the subject domain name.
3. Complainant states that the Domain Name was registered and is being used in bad faith, as Respondent's registration of other domain names demonstrates a bad faith pattern of registering domain names featuring well known trademarks of others, which justifies the conclusion that Respondent is in the business of acquiring and selling domain names for profit.
Complainant also states that when a registrant could not use a domain name without violating a trademark holder's right under applicable law, bad faith exists even if the registrant has done nothing but register the name. Furthermore, Complainant states that bad faith must also be found if it is unlikely that a registrant would have selected the domain name without knowing of the reputation of the mark used in the domain name.
Respondent has not filed a Response.
7. Discussion and Findings
a. Trademark rights
Complainant has, in Annex C to the Complaint, provided sufficient evidence of its rights to the HARRODS Mark, amongst others in the United Kingdom (where Complainant has its principal place of business) and in Germany (where Respondent has his address).
The Panel considers the HARRODS Mark to be a well-known mark, both in the United Kingdom and Germany. Complainant and its predecessors have been using the HARRODS Mark for over 150 years, during which period the mark has been able to build a reputation (both inside and outside the United Kingdom). According to Complainant, its Knightsbridge department store serves approximately 35,000 customers each business day, and the department store has become an attraction for tourists visiting London (it is mentioned in many travel guides on London, published in different countries and languages). Under the UDRP other Panels have found the HARRODS Mark to be a well-known or famous mark, see Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544 and Harrods Limited v. Harrod’s Closet, WIPO Case No. D2001-1027.
b. Identical or confusingly similar
The Domain Name consists of a combination of the element "harrods" (identical to the HARRODS Mark, in which the Complainant holds rights), the element "actual" (a common word in the English language, meaning (1a) existing in act and not merely potentially, (1b) existing in fact or reality, (1c) not false or apparent, or (2) existing or occurring at the time (source: Webster's New Collegiate Dictionary)), and the element (suffix) ".com" (which indicates that the Domain Name is registered in the .com gTLD).
Of these three elements, the element "harrods" is the distinctive element. Given the HARRODS Mark's reputation, the Panel finds a likelihood of confusion between the HARRODS Mark and the Domain Name. The addition of the element "actual" to the element "harrods" does not prevent this likelihood of confusion, as the element "actual" is undistinctive and only suggests either that the corresponding website is authentic or that the corresponding website is of present interest.
The Panel therefore finds that the Domain Name is confusingly similar to Complainant’s HARRODS Mark.
c. Rights or legitimate interests
By not submitting a Response, Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the Domain Name.
Furthermore, considering that Respondent currently does not use the Domain Name (it does not revolve to a website or, as far as the Panel can deduce, some other on-line presence of Respondent), although he registered the Domain Name over seventeen months ago, it cannot reasonably be considered that Respondent would be able to bring evidence of any of the circumstances described in Paragraph 4(c) of the Policy or other circumstances which could demonstrate any right or legitimate interest in the Domain Name.
The Panel therefore finds that Respondent has no right or legitimate interest in the Domain Name.
d. Bad faith
Complainant states that Respondent has registered other famous domain names, and provides (in Annex F to the Complaint) evidence of one such domain name registration, <galerielafayetteactuelle.com>. Complainant submits that this shows a pattern of such registrations.
In several decisions under the UDRP Panels have found that ownership of domain names which comprise the names or marks of well known business entities suggests an intent to profit from the activities of others (e.g. by selling the domain names for valuable consideration in excess of registration costs, see paragraph 4 (b)(i) of the Policy) and therefore a registration and use of those domain names in bad faith. See, e.g., Stella D'Oro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012; Nabisco Brands Co. v. The Patron Group, Inc., WIPO Case No. D2000-0032; Parfums Christian Dior v. 1 Network, Inc., WIPO Case No. D2000-0022; and J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035.
In this case, Respondent has registered only one such domain name (assuming that Galerie Lafayette is also a well-known business entity), and the Panel finds that it is uncertain whether this constitutes a pattern of registration that demonstrates in itself that the registration and use of the Domain Name have been made in bad faith.
However, given the HARRODS Mark’s reputation, the Panel finds it unlikely that (i) Respondent could commercially use the Domain Name without violating Complainant’s trademark right under either German or English law, and that (ii) Respondent would have selected the Domain Name without knowing of the reputation of that mark. Respondent has failed to bring forward any circumstances indicating a (future) non-commercial use, a (future) commercial use which would not infringe the HARRODS Mark, or his lack of awareness of the HARRODS Mark at the time of registration of the Domain Name.
The circumstances mentioned above after (i) and (ii) justify the conclusion that both the registration and the use of the Domain Name have been made in bad faith. Although these circumstances are not circumstances listed (as such) as examples of bad faith registration and use by Paragraph 4(b) of the Policy, earlier Panel decisions under the UDRP have found these circumstances to form evidence of bad faith. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 the Panel concluded that, as 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 the Complainant’s rights, and, in the absence of any claim by the Respondent that he intended to do otherwise, it was a permissable inference to conclude that paragraph (4)(b)(i) – summarized, Respondent has primarily registered the domain name for selling it at a profit - was applicable to the situation. In Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 the Panel concluded that the domain name was so obviously connected with such a well-known product (trademark) that its very use by someone with no connection with the product (trademark holder) suggested bad faith.
The Panel, therefore, concludes that there is sufficient evidence that Respondent's registration and use of the Domain Name have been made in bad faith.
On the basis of the foregoing the Panel decides that Complainant has provided the required evidence for the requested order transferring the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders the registration of the Domain Name <harrodsactual.com> be transferred to Complainant.
Wolter Wefers Bettink
Dated: November 19, 2001