WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Palimpex (UK) Limited
Case No. D2002-0491
1. The Parties
The Complainant is Harrods Limited of 87 –1135 Brompton Road, Knightsbridge, London SW1X 7XL, United Kingdom. The Complainant is represented by Messrs Hammond Suddards Edge of 7 Devonshire Square, Cutlers Gardens, London EC2M 4YH, United Kingdom.
The Respondent Palimpex (UK) Limited is a company incorporated in the United Kingdom whose address is at 50 Francis Road, London E10 6PP, United Kingdom. The Respondent is not represented and has not filed a response to the Complaint.
2. The Domain Names and Registrar
The domain names in dispute are <harrodspromotionalproducts.com> and <harrodscorporategift.com>. The Registrar of the domain names is Network Solutions Inc of 505 Huntmar Park Drive, Herndon, Virginia, VA 20170-5152, United States of America.
3. Procedural History
The Complaint was received by the Center on May 27, 2002, and acknowledged on May 29, 2002. A request for verification of the domain names was made to the Registrar, Network Solutions Inc, on May 29, 2002. A Response was received from the Registrar on June 4, 2002, confirming that Palimpex (UK) Limited was the registrant of the two domain names in dispute and that its administrative contact, technical contact and billing contact was Mr. Ratan Pal of Palimpex (UK). Notification of the Complaint and commencement of the administrative proceedings was given by the Center to the Respondent on June 5, 2002, by post, fax and by email. No Response having been received from the Respondent, notification of the Respondent's default was given on June 28, 2002.
No further communication having been received from the Respondent an administrative panel consisting of a sole panelist, Mr. Clive Duncan Thorne, was appointed on July 16, 2002, with a projected decision date of July 30, 2002.
The Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel understands that the appropriate fees have been paid by the Complainant. No interim orders have been made by the Panel. The language of the administrative proceeding is English.
4. Factual Background
The Complainant trades as the world famous Harrods Department Store in the Knightsbridge area of London. It has done so for more than 150 years since about 1849. The Complainant's store is unique and highly prestigious providing over one million goods and 50 separate services. It typically serves approximately 35,000 customers each day and has become a "mandatory" stop for tourists visiting England. The Harrods Department Store has been promoted internationally for many years and its international reputation has been reinforced by extensive overseas exports and by an international mail order business that extends worldwide. The Complainant has also introduced satellite stores at a number of major international airports. Stores in Hong Kong and in Japan also offer a selection of Harrods products.
On February 14, 1999, which is before the Respondent's registration of the domain names, the Complainant launched an Internet website at "http://www.harrods.com". The website features a selection of photographs and panoramic images of the Complainant's London store together with information about the Complainant's history, the Harrods Group and online shopping. Details and photographs of the Complainant's products and services, promotions, competitions and events are also available. The Complainant exhibits at Annex C to the Complaint representative pages from the website.
The Complainant submits that as a result of the tremendous volume of its customers and the extensive advertisement and promotion of the Harrods mark, the mark is famous and has acquired substantial goodwill which belongs exclusively to the Complainant.
The Complainant has also used registered or applied to register the mark "HARRODS" in many countries of the word for a wide variety of goods and services. As a result the Complainant is the owner of a worldwide trade mark portfolio and the Complainant's trade marks have become synonymous with a wide variety of high quality luxury products and services. The Complainant's trade mark portfolio includes the following registered trade marks:-
(i) UK trade mark number 1266810 for the mark HARRODS in Class 16
(ii) UK trade mark number 2245927 for the mark HARRODS for services in Class 35 which is expressed to include the bringing together for the benefit of others of a variety of goods through online media.
(iii) European Community trade mark number 62414 for the mark HARRODS for a wide variety of goods and services in Classes 1 to 42
(iv) US trade mark number 1354693 for the mark HARRODS for services in Class 42 including retail mail order services.
(v) US trade mark number 2443875 for the mark HARRODS ON LINE for services in Class 35 including on line retail store services.
The Complainant has exhibited copies of trade mark certificates relating to the above registrations at Annex D to the Complaint.
The Panel accepts the above facts as submitted by the Complainant. There are no submissions to the contrary by the Respondent.
The history of the current dispute is set out in correspondence exhibited at Annex E to the Complaint. It appears that a demand letter was sent by Messrs. Hammond Suddards Edge to the Respondent on April 16, 2002, which was responded to by Mr Ratan Pal on behalf of the Respondent by letter of April 24, 2002. In the Panel's view that letter is important and therefore the Panel feels that it should be reproduced in its decision as follows:-
"Further to your letter and email dated 16th April 2002 regarding your objection in the registration of the domain names harrodspromotionalproducts.com and harrodscorporategift.com.
Without prejudice I can tell you there was no intention of bad faith when registering these names. It was merely for the simple reason because I like the name "harrods" very much.
If you search on the Internet for the name "harrods" you will find several companies trading with the domain names harrods contained in it. Please see below of some of the websites that are using the name "harrods".
So when I registered these domain names I did not even think I was doing any crime, I was under the impression that if other people can use this name and if it accepts registration of such domain names then it must be legal so I went ahead with the said domain, as the domain names have other words after the word harrods it is not just harrods by itself. I had registered them in good faith so I can establish an online business.
I have also two other domain names which you obviously haven't noticed registered with the words harrods contained in it, they are harrodsonlineshopping.com and harrodsathome.com, as I mentioned earlier I did not think it was a crime to do so as http://www.register.com and http://www.networksolutions.com has accepted these domain names for registration and also there are so many other domain names with the words "harrods" that are not registered by your client.
I am on the verge of designing these sites. I have travelled to USA, India, and Austria and visited many suppliers/customers for feasibility study, I have done a lot of ground work on how to develop these sites and I have a web designing team and database developers who are working on this project. I have already spent a lot of money in the designing of these sites, the reason I have not uploaded the site yet is because I am working with another site right now, and once everything is ready then I was planning to launch these websites by Aug-02. I am very disappointed to learn that there is an objection on your part.
I would be happy to transfer the four domains to your client subject to any of the following agreements to cover my costs and to give up my future plan:--
1. A lump sum settlement of £300K for the above 4 names (£75K each)
2. Or a yearly royalty of £25K to use those names.
3. Or use this name as joint venture with your client to develop these sites for serious online business. A full project plan can be given to your client.
I hope we will come to some sort of arrangement subject to your client's agreement to take those brilliant domain names with one of the above options, I will then proceed accordingly."
Hammond Suddards Edge responded on April 26, 2002, asserting that the proposals made by Mr. Ratan Pal including in particular the proposal for payment of a lump sum of £300,000 for the domain names would result in the domain names being transferred to Harrods under both the current complaints procedure or in an action brought in the UK courts. Further written undertakings were requested within seven (7) days of the letter. Mr. Ratan Pal responded on April 30, 2002, asking how much the Complainant would be prepared to "pay for the said domain names". Hammond Suddards Edge responded on May 2, 2002, indicating that whilst their client was prepared to pay any reasonable transfer costs that were charged by the Registrar for the domain names, the Complainant would not be held to ransom and would not enter into negotiations for the purchase of the domain names. There is no further correspondence before the Panel and the current proceedings were commenced shortly thereafter.
5. Discussion and Findings
In order to succeed in its request for an order to transfer the domain names to the Complainant, the Complainant has the burden of proof in ensuring that each of the elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") are present. These are as follows:-
(i) The Respondent's domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii)The Respondent has no rights or legitimate interest in respect of the domain names;
(iii) The Respondent's domain names have been registered and are being used in bad faith.
The Panel proceeds to deal with each of these in turn.
(i) The domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Panel has already found that the Complainant has established significant goodwill in the mark HARRODS and that the Complainant has significant registered trade mark rights in the mark HARRODS.
In the present case the domain names are qualified by the words "promotional products" and "corporate gift". In the Panel's view these words are purely descriptive of goods and services provided by the Complainant as a major retail department store, and it therefore finds that the Respondent's domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name
No evidence has been given by the Respondent which establishes that it has any rights or legitimate interest in respect of the domain names. Far from it, the letter of April 24,2002, referred to above indicates that the domain names were registered by the Respondent for the "simple reason" that Mr Ratan Pal "liked the name Harrods very much". In the Panel's view this is an insufficient reason to justify any rights or legitimate interest in respect of the domain name. It follows that the Complainant succeeds under this head.
(iii) The domain names have been registered and are being used in bad faith
The Complainant submits that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement of the website under paragraph 4(b)(iv) of the Policy. It asserts that this confusion is compounded by the Complainant's promotional products and corporate gift services that are advertised by the Complainant on the Internet.
The Complainant also submits that the domain names are registered or acquired primarily for the purpose of selling, renting or otherwise transferring to the Complainant or a competitor to the Complainant for consideration in excess of the registrant's out of pocket expenses under paragraph 4(b)(i) of the Policy. The Complainant relies upon the Respondent's letter of April 24, 2002, referred to above. It should be noted that when the Respondent was further informed by the Complainant's solicitors that the registration of the domain names constituted registration in bad faith and passing off the Respondent stated that it would "accept a reasonable offer for each domain name".
The Panel finds that the illustration of bad faith embodied within paragraph 4(b)(i) of the Policy is clearly established. The offer of transfer for payment referred to in the April 24, 2002, letter is considerably above any consideration constituting out of pocket expenses. Moreover the Panel finds that the further subsequent offer by the Respondent of "a reasonable offer for each domain name" goes beyond reasonable transfer costs or out of pocket expenses. It follows that the Complainant has succeeded under this third element and has therefore succeeded in its complaint.
The Complainant requests that the Panel issues a decision that the contested domain names be transferred to the Complainant. The Panel having found for the Complainant orders that the domain names in dispute <harrodscorpategift.com> and <harrodspromotionalproducts.com> be transferred to the Complainant from the Respondent.
Clive Duncan Thorne
Dated: July 30, 2002