WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. John Griffin
Case No. D2002-0641
1. The Parties
The Complainant is Harrods Limited ("Harrods"). Harrods is a private company limited by shares, whose principal place of business is located in Knightsbridge, London, United Kingdom.
The Respondent is identified in the Complaint as John Griffin, whose address is 241 West Wycombe Road, High Wycombe, Buckinghamshire HP12 3AS, United Kingdom. The Administrative Contact for the Respondent listed on the "Whois" reports submitted with the Complaint is Technical Support, Easily Limited, 109-111 Farringdon Road, London EC1 3BW, United Kingdom.
2. The Domain Name and Registrar
The disputed domain names are <harrodsusa.net>, <harrods-usa.net> and <harrodsusa.com>(the "Domain Names"). The Registrar is Melbourne IT d/b/a Internet Names WorldWide <inww.com> ("Internet Names"). In an e-mail dated July 18, 2002, to the WIPO Arbitration and Mediation Center (the "Center"), the Registrar confirmed that the ICANN Uniform Domain Name Dispute Policy (the "Policy") applies to the Domain Names registered by Respondent on May 22, 2001, and January 11, 2002.
3. Procedural History
On July 11, 2002, the Complaint, which is in the format required by the Policy, was filed electronically with the Center. The Complainant certifies that the Respondent was duly served with the Complaint. On July 15, 2002, a hardcopy of the Complaint was received by the Center. On July 19, 2002, having duly sought and obtained verification from the Registrar, the Center completed a formal compliance checklist.
On July 19, 2002, the Center duly served a Notification of Complaint to the Respondent both electronically and by courier. On August 12, 2002, having received no response to the Complaint from Respondent within the specified time in the Notification of Complaint, the Center notified the Respondent that it was in default.
On August 22, 2002, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date of September 5, 2002. This Notification informed the parties that the Administrative Panel would be comprised of a Sole Panelist, Lynda J. Zadra-Symes of Irvine, California, who was appointed by the Center after an invitation had been issued and an acceptance and Declaration of Independence and Impartiality had been duly returned.
4. Factual Background
Harrods is an English private company, limited by shares, with a principal place of business in Knightsbridge, London, England. Harrods has carried on business for over 150 years.
Harrodsí Knightsbridge store typically serves approximately 35,000 customers each business day. It is a large, well-known department store and has become a popular tourist destination for tourists visiting England.
Harrods has used, registered or applied to register the trademark HARRODS in a number of countries throughout the world for a wide variety of goods and services.
The Complainant's trademark portfolio includes the following registered trademarks:
UK Trade Mark No. 1266810 registered May 10, 1986, for the mark HARRODS for various goods in Class 16.
UK Trade Mark No. 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 by means of telecommunications.
Community Trade Mark No. 62414 registered April 1, 1996, for the mark HARRODS for a wide variety of goods and services in Classes 1 to 42.
US Trademark No. 1354693 registered August 13, 1985, for the mark HARRODS for services in Class 42 including retail mail order services of consumer goods.
US Trademark No. 2443875 registered April 17, 2001, for the mark HARRODS ONLINE for services in Class 35 including online retail store services featuring general merchandise.
Harrods also owns and uses two domain names <harrods.com> and <harrodsonline.com> for purposes including the sale of Harrods merchandise internationally.
Respondent appears to be an individual living in Buckinghamshire, England. It is not known what connections he has with any particular business, service or industry. According to the Complaint, and Annexes thereto, the domain names <harrodsusa.com> and <harrodsusa.net> resolve to the website of Easily.com, a domain name registration service which offers domain names for sale. The web site at <harrodsusa.com> stated that "harrodsusa.com is for sale Ė so make me an offer" and provided a link to the Respondentís email address.
5. The Parties' Contentions
The Complainant requests a decision in its favor on the grounds that the domain names are identical or confusingly similar to the trademarks in which the Complainant has rights; the Respondent has no legitimate interests in the domain names and the domain names have been registered and are being used in bad faith.
Harrods claims it is the owner of over 150 years of international goodwill and reputation in the name of HARRODS. Since 1849, the Complainant and its predecessors have operated the Harrods Department Store in the Knightsbridge area of London, England. The Complainantís flagship Harrods store is highly prestigious and has an international reputation. It is claimed that the HARRODS mark is famous, has acquired substantial goodwill which belongs exclusively to the Complainant and which has come to be recognised as an indicia of origin exclusively identified with the Complainant.
In terms of Internet presence, the Complainant has been active on the Internet for some years and in particular, has actively operated the Internet web site <www.harrods.com> since February 14, 1999. Representative pages of Harrodsí website are attached to the Complaint. These pages include information on the Complainant's London store and the products and services available, together with information about the Complainant's history, Harrods Online Shopping and the Harrods Group, including Harrods Casino Online.
Harrods Online Shopping provides Internet users with an online ordering service for delivery exclusively within the UK. In the past, access to such services was provided to Internet users at the web site address "www.harrodsonline.com". Today, Internet users entering this web site address are directed to the Complainant's main web site at "www.harrods.com" from which online orders can be placed. "www.harrodsonline.com" 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.
Previous WIPO Decisions have held the HARRODS mark to be a well-known mark with an international reputation. See Harrods Limited v Walter Wieczorek WIPO Case No. DTV2001-0024; Harrods Limited v AB Kohler & Co. WIPO Case No. D2001-0544; Harrods Limited v Harrodís Closet WIPO Case No. D2001-1027; and Harrods Limited v Vineet Singh WIPO Case No. D2001-1162.
As a result, the Complainant states that the disputed domain names suggest a false designation of origin with or sponsorship by the Complainant.
The Respondent has defaulted and has not provided a Response to the Complaint. He did, however, respond in an email dated April 23, 2002, to the Complainantís cease and desist letter dated April 10, 2002.
Notwithstanding the Respondentís default, the Complainant must establish a breach of rule 4(a) of the ICANN policy.
6. Discussions and Findings
The Complainant must provide evidence and submissions in support of the Complaint. The Respondent is given full opportunity to respond. In this case, the Respondent has defaulted and placed no evidence or submissions before the Panel.
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish the following three elements:
(i) the Respondentís domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
The Panel, as directed by paragraphs 14(a), 14(b) and 15(a) of the Rules, shall render the decision on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and principles of law that it deems applicable. The Panel may draw such inferences as it deems appropriate on the basis of Respondent's Response and give such weight as it considers appropriate to the Complainant's undisputed representations.
Each ground is discussed separately below.
A. The Domain Name is Identical or Confusingly Similar to the HARRODS Trademark
The only difference between the disputed domain names and the HARRODS trademarks is the addition of the geographic designation "usa" to the HARRODS name. The geographic designation "usa" adds nothing distinctive, and the emphasis remains on the name HARRODS to attract the attention of internet users. Indeed, internet users are likely to believe the domain names are used by the Complainant for its American customers. Thus, the addition of "usa" does not avoid the suggestion of a false sense of origin or sponsorship with the Complainant.
There can be no doubt that the name HARRODS is a famous name associated exclusively with Complainant. The Panel notes several WIPO decisions listed above in which Complainantís HARRODS mark has been held repeatedly to be an internationally well-known and famous mark. The Panel has no hesitation in finding that Complainantís HARRODS mark is well-known, famous, and exclusively associated with Complainant.
Accordingly, Complainant has established element 4(a)(i).
B. The Respondent Does Not Have A Legitimate Interest in the Domain Names
It is difficult to believe that the Respondent could not have been aware of the HARRODS mark at the time of registration of the disputed domain names.
The Respondent did not submit any response and made no attempt to rebut Complainant's prima facie showing. Respondent has provided no evidence or submissions in justification of any claim that it has rights or legitimate interests in the disputed domain names.
In addition, the record indicates that Respondent has not used or prepared to use the domain names in connection with any bona fide offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy. Respondent is not commonly known by the domain names as contemplated under paragraph 4(c)(ii) of the Policy, nor is Respondent making a legitimate non-commercial or fair use of the domain names as contemplated under paragraph 4(c)(iii) of the Policy.
Indeed, in his email to Complainant dated April 23, 2002, Respondent expressly stated "there is no such company as "HarrodsUsa" and further that "there are no web-sites. These are simply domain names."
Accordingly, there is no evidence whatever of any business with which the Respondent may legitimately be connected that would be entitled to use the mark HARRODS as part of a domain name associated with that business.
Accordingly, it follows that the Complainant has established element 4(a)(ii).
C. The Respondent Registered and Used the Domain Name in Bad Faith
Paragraph 4(b)(i) of the Policy provides that, for the purposes of Paragraph 4(a)(iii), the following circumstances, amongst others, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondentís out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of Respondentís web site or location or of a product or service on Respondentís web site or location.
Each of the four circumstances in paragraph 4(b) is a separate instance of "registration and use of a domain name in bad faith."
The Complainant alleges that the registration of the disputed domain names is a blatant attempt to capitalize unfairly on the fame of the HARRODS trade marks and for the purpose of selling or otherwise profiting from the domain names by transfer to a third party for valuable consideration in excess of the documented out-of-pocket costs directly related to the registration of the domain name.
The evidence submitted with the Complaint indicates that Respondent was attempting to sell at least one of the disputed domain names, <harrodsusa.com>. The website located at that domain name stated "harrodsusa.com is for sale Ė so make me an offer" and provided a link to the Respondentís email address.
In his email response dated April 23, 2002, to Complainantís cease and desist letter, Respondent stated that "It simply isnít fair that I should simply have to give up these domain names when I am the one who has gone to the trouble and expense of registering them while your client has done absolutely nothing." The record indicates that Respondent was aware of Complainantís HARRODS trademark and registered the domain names primarily for the purpose of selling them for valuable consideration in excess of Respondentís out of pocket costs.
None of the available defenses that are set forth in paragraph 4(c) of the Policy apply to this case. Respondent has not used or prepared to use the domain names in connection with any bona fide offering of goods or services; Respondent is not commonly known by the domain names; and Respondent is not making a legitimate non-commercial or fair use of the domain names. Respondentís registration of the disputed domain names in this case is clearly designed to extract from the Complainant or a third party a financial gain beyond the costs and disbursements directly associated with the registration of the domain names in the first instance.
The Panel therefore concludes that Complainant has established that Respondentís registration and use of the domain names have been made in bad faith.
For all of the foregoing reasons, the Panel decides that the Complainant has met its burden of proof under paragraph 4(a) of the Policy; the domain names are confusingly similar to trademarks in which Complainant has rights; Respondent lacks a legitimate interest in the domain names; and Respondent has registered and used the domain names in bad faith. Accordingly, this panel concludes that the domain names <harrodsusa.com>, <harrods-usa.net> and <harrodsusa.net> should be transferred to the Complainant.
Dated: September 5, 2002