WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Jimmy Vera
Case No. D2002-0629
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 Suddards Edge of 7 Devonshire Square, Cutlers Gardens, London EC2M 4YH, United Kingdom.
The Respondent is Jimmy Vera of Bird Rock Road, Suite 1, Basseterre, St Kitts.
2. The Domain Name and Registrar
The domain name in dispute is <harrodssportsbook.com>. The Registrar of the domain name is Network Solutions Inc of 505 Huntmar Park Drive, Herndon, Virginia 20170-5142, United States of America.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on July 8, 2002. Acknowledgement of receipt of the Complaint was given by the Center to the Complainant on July 10, 2000. On July 10, 2002, a request for registrar verification was made by email to Network Solutions Inc. Network Solutions Inc responded on July 11, 2002, confirming that the domain name was registered by the Complainant Jimmy Vera at the above address and that his email address was "firstname.lastname@example.org".
Notification of the Complaint was given by email to the Respondent on July 18, 2002.
No formal Response was received from the Respondent save that on August 7, 2002, the Center received an email dated 6 August from the Respondent. The Center replied on August 9, 2002, indicating that unless further notice from the Respondent was received the Center regarded the email as the Response. No further communication having been received a panel was appointed on August 15, 2002, consisting of a sole panelist Mr. Clive Thorne. The Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The Panel understands that the appropriate fee has 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 Departments 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 1 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 which extends world wide. The Complainant has also introduced satellite stores at major international airports such as Frankfurt, Heathrow, Kuala Lumpur, Lisbon and Vienna. The Ceibu department store in Hong Kong and various Mitsukoshi stores across Japan also offer a selection of Harrods products. The Complainant draws attention to the fact that on February 14, 1999, it started to operate an internet website "www.harrods.com. The website features information about the Complainant's London store and the products available together with information about the Complainant's history, the Harrods Group and Harrods Casino Online. At Annex C to the Complaint the Complainant produces representative pages from this website.
Harrods Casino Online enables internet users to enjoy the thrill of gambling on their own PC. It is the culmination of phase 1 of the Complainant's plans for the Harrods Resort and Casino Online which will provide internet users with a virtual world of shopping, entertainment and sports to compliment the "buzz" of the Harrods Online Casino. Information on Harrods Casino Online may be obtained from the websites "www.harrods.com" and "www.harrods-casino.com". The internet website "www.harrods-casino.com" has been actively operated since November 28, 2000.
In support of its Complaint the Complainant relies upon substantial trading goodwill in the mark "HARRODS" as well as a portfolio of trade marks for the mark "HARRODS". The Complainant submits that a result of the quality of these good and services and the volume of its trading and promotion its mark "Harrods" is famous and has acquired "substantial goodwill" which belongs exclusively to the Complainant. It considers that this is one reason why it has been the victim of a number of domain name disputes in the past but in which has always been successful. Some of these have been decided under the WIPO Dispute Resolution provisions and 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) UKI Trade Mark number 2245927 registered on 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 by 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) European Community Trade Mark number 2227965 the subject of an application dated May 21, 2001, for the mark "HARRODS CASION" for gambling services in class 41.
(v) US Trade Mark number 1354693 registered on August 13, 1985, for the mark "HARRODS" for services in class 42 including retail mail order services and consumer goods.
(vi) US Trade Mark number 2115836 registered November 25, 1997, for the mark "HARRODS" for goods in class 25 including footwear, headgear and clothing for children, men and women (including leather sports wear, jogging suits, swim suits, wet suits and waterproofs).
The Complainant exhibits printouts and copies of the trade mark registration certificates at Annex D to the Complaint.
The history of the current dispute is set out in correspondence exhibited at Annex E to the Complaint.
The correspondence begins with a demand letter dated April 26, 2002, sent by Hammond Suddards Edge on behalf of the Complainant to the Respondent seeking undertakings that the Respondent will cease all use of the domain name <harrodssportsbook.com> and take all necessary steps to have the registration transferred to the Complainant. No response appears to have been received to that letter. Accordingly on June 6, 2002, Hammond Suddards Edge wrote to the Respondent indicating that in the absence of the receipt of undertakings or documents effecting transfer of the domain names within 14 days the Complainant will file a Complaint with the Center.
The Respondent replied by email on June 15, 2002, indicating inter alia that he did not receive the April 26, 2002 letter and pointing out that the domain name was up for sale at "greatdomains.com" for $6,500. Hammond Suddards Edge responded on June 18, 2002, pointing out that the Complainant was not prepared to purchase the domain name but that the domain name was now advertised for sale at $20,000 rather than the $6,500 referred to by the Respondent. The Respondent replied by email on June 23, 2002, stating that the Respondent "can either buy the name, or you can lose it forever".
The email of August 7, 2002, from the Respondent which has been treated as a Response is written in similar terms to the earlier emails from the Respondent. In the email the Respondent states inter alia:-
(i) That he would consider selling the email to the Complainant "but if they kept sending me threatening stuff that I would not even want to sell it to them".
(ii) The Respondent had "never heard of Harrods Department Store".
(iii) The Complainant "is just a rich place who is trying to push me around because they probably figure I don't have money to defend myself".
(iv) The Respondent "has the right to the domain name and does not want to infringe on the Harrods Department Store".
(v) "Harrods does not have the right to everything with the name Harrods on it".
(vi) "I am doing a business that is not even close to a department store".
5. Discussion and findings
In order to succeed in its request for an Order to transfer the domain name 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 Respondent's domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant submits that the only difference between the Respondent's domain name and the Complainant's trade marks is the addition of the words "sports book". It asserts since the mark "Harrods" evokes the Knightsbridge department store and its related products and services which include the Harrods Casino Online, the use of the domain name connotes a Harrods betting or gaming service or a Harrods book service or a Harrods sports service. The Complainants have established in their evidence that Harrods as a department store is engaged in gaming and betting through Harrods Casino Online, through offering the sale of books and offering the sale of sports goods. It therefore asserts that the commercial impression conveyed to internet users by the use of the domain name in dispute is that the Respondent's goods or services are sponsored, endorsed or affiliated with the Complainant as this constitutes a usurpation of the goodwill associated with the mark Harrods.
The Respondent does not address this issue in his correspondence but rather takes the view that the Complainant has no monopoly on the rights in the mark Harrods especially in the United States (see for example the Respondent's letter of June 15, 2002).
The Panel accepts, on the evidence of trade mark rights and trading goodwill submitted by the Complainant that the Complainant's submission with regard to this element succeeds.
The Panel finds that the domain name in dispute is confusingly similar to the trade marks in which the Complainant has rights.
(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 circumstances that would evidence rights to a legitimate interest in the domain name. There is no indication of bona fide use for the purposes of offering goods or services by the Respondent. In correspondence the Respondent admits that the domain name is "up for sale at greatdomains.com … for $6,500". This admission by itself is a recognition that the Respondent has no legitimate interest beyond an interest in the sale of the domain name. There is no evidence of bona fide trading use by the Respondent. Accordingly the Panel finds that the Respondent has no legitimate interest in the domain name.
(iii) The domain name has been registered and is being used in bad faith
The Complainant's submission in respect of this element is based upon paragraph 4bi of the Policy to the effect that the domain name was registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name to either the Complainant or a competitor of the Complainant for consideration in excess of the Respondent's out of pocket expenses. The Complainant relies upon the Respondent's letter of June 15, 2002, which refers to the offer of sale at $6,500 and the subsequent evidence obtained by an internet search exhibited at Annex F that the purchase price was in fact $20,000 rather than the $6,500 expressed in the letter.
When the Respondent was informed by the Complainant's solicitors that the registration of the domain name was for the primary purpose of selling the domain name in excess of out of pocket expenses constituted registration of bad faith, the Respondent replied:-
"…well you can either buy the name, or you can lose it forever. However if you keep trying to BS me, I might change my mind about selling it to you".
In the Panel's view, the evidence is clear that the Respondent had registered the domain name for the primary purpose of selling it in excess of out of pocket expenses. The Panel would take this view in relation to a purchase price of $6,500 and more so for a purchase price of $20,000.
Accordingly the Panel finds for the Complainant under this head.
The panel finds for the Complainant in respect of each of the elements set out in paragraph 4a of the policy. It follows that the Complainant succeeds in its complaint.
The Panel finds for the Complainant and orders that the domain name <harrodssportsbook.com> be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Dated: August 29, 2002