WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. a2zbags.com
Case No. D2002-0492
1. The Parties
The Complainant is Harrods Limited of 87-135 Brompton Road, Knightsbridge, London SW1X 7XL, United Kingdom. The Complainant is represented by Messrs. Hammond Suddard Edge of 7 Devonshire Square, Cutlers Gardens, London EC2M 4YH, United Kingdom.
The Respondent, according to a WHOIS search, is a2zbags.com of 50 Francis Road, London E10 6PP, United Kingdom.
2. The Domain Names and Registrar
The domain names in dispute are <harrodsonlineshopping.com> and <harrodsathome.com>. The Registrar of the domain names if Register.Com Inc. of 575 Eighth Avenue, 11th Floor, New York, NY 10018, United States of America.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") on May 27, 2002. A request for verification of the domain name was made to the Registrar on May 29, 2002. The Registrar Register.Com, confirmed that the domain names in dispute were registered through Register.Com Inc. by "a2zbags.com" whose address is given as Ratan Pal of 50 Francis Road, Leyton, London E10 6PP. Notification of the Complaint was given to the Respondent by the Center on May 31, 2002, by post, facsimile 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 was appointed on July 16, 2002, consisting of a sole panelist, Mr. Clive Duncan Thorne, 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. The language of the administrative proceeding is English. No interim directions orders have been made by the Panel.
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 flagship Harrods store is unique and highly prestigious providing over one million goods and 50 separate services. Typically the store serves approximately 35,000 customers each business day and has become a "mandatory" stop for tourists visiting London. The Harrods department store has also 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 major international airports such as Frankfurt, Heathrow, Kuala Lumpur, Lisbon and Vienna. The Seibu Department Store in Hong Kong and various Mitsukushi stores across Japan also offer a selection of Harrods products. The Complainant draws attention that on February 14, 1999, which was before the date of the Respondents registration of the domain names in dispute, the Complainant launched an Internet website at "www.harrods.com". The website features inter alia photographs and panoramic images of the Complainant's London store together with information about the Complainant's history, the Harrods Group and online shopping. At Annex C to the Complaint the Complainant produces representative pages from the website.
The Harrods online shopping service provides Internet users with an online ordering service for delivering exclusively within the United Kingdom. In the past access to such services was provided to Internet users at the website "www.harrodsonline.com", currently Internet users entering the website address are directed to the Complainant's main website at "www.harrods.com" from which online orders can be placed. It is intended that "www.harrodsonline.com" will eventually offer to consumers in other parts of the world a means of placing purchase orders via the Internet for products available at the Harrods Department Store.
In support of its Complaint the Complainant relies upon substantial trading goodwill as well as a portfolio of trade marks. The Complainant submits that as a result of the quality of its goods and services and the volume of its trading and promotion its mark "HARRODS" is famous and acquired "substantial goodwill". It believes that this is one reason why it has been the victim of a number of domain name disputes in the past in which it has always been successful. Some of these which have been decided under the WIPO Dispute Resolution Provisions are referred to in the Complaint. The Complainant sets out a number of the more important and relevant trade mark registrations on which it relies including the following:-
(i) UK trade mark number 1266810 registered on May 10, 1986, for the mark "HARRODS" for various goods in Class 16
(ii) UK trade mark number 2245927 registered 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 department store through the said online media or my means of telecommunications.
(iii) European Community trade mark number 62414 registered on April 1, 1996, for the mark "HARRODS" for a wide variety of goods and services in Classes 1 to 42.
(iv) Community trade mark number 1281047 published August 17, 1999, for the mark "HARRODS DIRECT" for services in Class 35 for advertising the promotion of goods and services available by electronic mail order and the Internet.
(v) European Community trade mark number 1281153 published August 17, 1999, for the mark "HARRODS ONLINE" for services in Class 35.
(vi) US trade mark number 1354693 registered August 13, 1985, for the mark HARRODS for services in Class 42 including retail mail order services and consumer goods.
(vii) US trade mark number 2443875 registered July 15, 1999, for the mark HARRODS ONLINE for services in Class 35 including online retail store services featuring general merchandise.
The Complainant exhibits print outs and copies of these trade mark registration certificates at Annex D to the Complaint.
In the absence of any submissions from the Respondent the Panel accepts the above evidence as to the Complainants trading activities and trade mark rights.
The history of the current dispute is set out in correspondence exhibited at Annex E to the Complaint beginning with a demand letter dated April 16, 2002, written to a company called Palimpex UK Limited at the same address as the Respondent in relation to the domain names <harrodspromotionalproducts.com> and <harrodscorporategift.com>. These domain names are the subject of separate proceedings under the UDRP heard before a WIPO panel in Complaint number D2002-0491. That letter was responded to by Mr. Ratan Pal on Palimpex (UK) Limited notepaper dated April 24, 2002, in which Mr. Pal refers to the fact that he has two other domain names "which you obviously have not noticed registered with the word Harrods contained in it, they are "harrodsonlineshopping.com" and "harrodsathome.com"" He points out that those names have been accepted for registration. It should be noted that in that letter, although responded to in relation to the domain names the subject of WIPO Complaint number D2002-0491, he states:-
"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"
However he then states in that letter that he would be happy to transfer the four domains to the Complainant subject to payment of a lump sum of £300,000 for the four names or a yearly royalty of £25,000 to use those names.
Hammond Suddards Edge responded in relation to all four domain names on April 26, 2002, again requesting written undertakings and pointing out that the proposal of a lump sum of £300,000 would result in the domain names being transferred to Harrods under any complaint to the Center or an action in the UK courts.
Mr. Pal responded on April 30, 2002, saying that it would be "nice to come to a mutual agreement for the benefit of both parties" and asking how much the Complainant would be prepared to pay for the domain names. Hammond Suddards Edge responded on May 2, 2002, explaining that whilst the Complainant was prepared to pay any reasonable transfer costs it would "not be held to ransom" and would not "enter into negotiations for the purchase of these Internet domain names with you." That was how matters were left pending the current Complaint.
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 ensuring the 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 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 registered trade mark rights in the mark "HARRODS" as well as a substantial trading goodwill in the mark "HARRODS".
The Complainant points out that the only differences between the Respondent's domain names and the Complainant's trade marks are the addition of the words "shopping" and "at home" respectively. It submits that given the fact that the Harrods mark instantly evokes the famous Knightsbridge department store adding "shopping" and "at home" merely suggests that Internet users accessing the websites at "www.harrodsonlineshopping.com" and "www.harrodsathome.com" are able to purchase Harrods products either by the telephone, the Internet or through a catalogue. The Panel accepts these submissions and finds that the domain names incorporate non distinctive words ie "shopping" and "at home" which are confusingly similar to Complainant's trade mark rights. It follows that the Panel finds for the Complainant under this head.
(ii) The Respondent has no rights or legitimate interest in respect of the domain name
The Complainant submits that it does not believe that the Respondent can demonstrate any circumstance that would evidence rights to and legitimate interest in the domain names for the purpose of paragraph 4(c) of the Policy. It points out that the Respondent has not been commonly known by either of the names "harrodsonlineshopping" or "harrodsathome". The domain names are registered in the name of "a2zbags.com" and that this is the name by which the Respondent is commonly known. The Complainant also relies upon the Respondent's letter of April 24, 2002, in which the Respondent referred to liking the name "Harrods" very much. It submits that the Complainant and the Complainant's reputation for luxury goods and services are really the very reason why the Respondent likes the name Harrods "very much". It also relies upon the fact that the two domain names <harrodspromotionalproducts.com> and <harrodscorporategift.com> the subject of WIPO Complaint number D2002-0491 have also been registered by Mr. Ratan Pal of the Respondent.
In these circumstances and taking into account that there are no counter submissions from the Respondent the Panel finds that the Respondent has no rights or legitimate interest in respect of the domain name.
(iii) The domain names have been registered and are being used in bad faith
The Complainant submits that the Respondent has intentionally intended to attract for commercial gain Internet users to its website or other online location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website as envisaged by paragraph 4(b)(iv) of the Policy.
It also submits that the domain names were registered or acquired primarily for the purpose of selling, renting or otherwise transferring them to either the Complainant or a competitor of the Complainant for consideration in excess of the Registrants out of pocket expenses as envisaged by paragraph 4(b)(i) of the Policy. In support of this submission it relies upon the Respondent's letter of April 24, 2002, and the further correspondence in which the Respondent stated he would "accept a reasonable offer for each domain name". Upon being informed by the Complainant's solicitors that the Respondent was prepared to pay any reasonable transfer charges but would not be held to ransom and would not enter into negotiations, no response was received.
The Panel finds the Complainants submissions in relation to paragraph 4(b)(i) compelling in the light of the exhibited correspondence. Accordingly it finds that the Respondent has both registered and used the domain names in bad faith.
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 <harrodsonlineshopping.com> and <harrodsathome.com> be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: July 30, 2002