WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Surrinder Gill
Case No. D2003-0243
1. The Parties
The Complainant is Harrods Limited, of London, England, represented by DLA, solicitors, of London, England.
The Respondent is Surrinder Gill, of London, England.
2. The Domain Name and Registrar
The disputed domain name <theharrods.com> ("the Domain Name") is registered with CSL Computer Service Langenbach GmbH, d/b/a/ Joker.com ("Joker").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2003. On April 1, 2003, the Center transmitted by email to Joker a request for registrar verification in connection with the domain name at issue. On the same day, Joker transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 27, 2003.
The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on May 6, 2003.
The Center appointed Christopher P. Tootal as the sole panelist in this matter on May 15, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
A. The Complainant is the registered proprietor of the trademark HARRODS ("the Trademark") in numerous jurisdictions. By way of example, it owns:-
(i) UK Trade Mark No. 1266810 registered May 10, 1986
(ii) 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 departmental store through the said online media or by means of telecommunications.
B. The Domain Name was registered on November 1, 2000.
C. The Complainant owns the domain name <harrods.com>, registered on February 14, 1999.
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:
(i) The Complainant is the owner of over 150 years of international goodwill and reputation in the name HARRODS. Since about 1849, the Complainant and its predecessors have operated the world-famous Harrods Department Store in the Knightsbridge area of London, England. The Complainant's flagship Harrods store is unique and highly prestigious, providing over one million goods and 50 separate services. The store typically serves approximately 35,000 customers each business day and it has become a "mandatory" stop for tourists visiting England.
(ii) 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 major International Airports such as Frankfurt, London Gatwick, London Heathrow, Kuala Lumpur, Lisbon and Vienna. The Seibu Department Store in Hong Kong and various Mitsukoshi Stores across Japan also offer a selection of Harrods products. In conjunction with associated companies, the goodwill and reputation in the HARRODS name has extended to product ranges that include Harrods Estates, Harrods Bank and Harrods Casino Online.
(iii) As a result of the quality of the Complainant's goods and services, the tremendous volume of its customers, and the extensive advertisement and promotion of the Trademark, the Trademark is famous, has acquired substantial goodwill belonging exclusively to the Complainant and has come to be and is recognized as an indicia of origin exclusively identified with the Complainant. No doubt as a direct consequence of such reputation the Complainant has been the victim of a number of domain name disputes; however, it has always been successful in the retrieval of domain names which seek to take unfair advantage of its world famous brand.
(iii) Confirmation of the reputation of the Complainant and the HARRODS name may be found from previous WIPO Decisions, such as Harrods Limited v Walter Wieczorek WIPO Case No. DTV2001-0024 which considered the "HARRODS Mark to be a well-known mark" with a reputation "both inside and outside the United Kingdom." (See also Harrods Limited v AB Kohler & Co. WIPO Case No. D2001-0544, Harrods Limited v Harrod's Closet WIPO Case No. D2001-1027 and Harrods Ltd v Dijitaldjs WIPO Case No. D2001-1163 and Harrods Limited v Vineet Singh WIPO Case No. D2001-1162).
(iv) The only difference between the Domain Name and the Trade Mark is the addition of the word "the". Since the HARRODS mark instantly evokes the famous Knightsbridge department store and its related products and services, adding "the" merely suggests that the website at <www.theharrods.com> is connected to the Complainant. Thus the commercial impression conveyed to Internet users by the website at <www.theharrods.com> is that the Respondent's services are sponsored, endorsed or affiliated with the Complainant. Accordingly, the Domain Name suggests a false sense of origin or sponsorship for any associated products, goods or services and was undoubtedly chosen by the Respondent in an effort to free-ride off the goodwill associated with the Trade Mark, in which the Complainant enjoys exclusive rights. [In support of this allegation the Complainant states "Representative pages (of the website at "www.theharrods.com") are attached as Annex E". The Panel notes that the only page exhibited at Annex E is a page from a website at "uk2.net" (see reference to this website at (vii) below). In addition the Panel is referred to some 19 WIPO decisions.]
(v) The Complainant does not believe that the Respondent can demonstrate any circumstances that would evidence rights to and legitimate interests in the domain name for the purpose of paragraph 4(c) of the Policy.
(vi) The Complainant submits that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location or of a product or service on the website or location (paragraph 4(b)(iv) of the Policy). [In support of this allegation the Complainant relies on some 20 WIPO decisions, but on no evidence material to this case. However, in a cease and desist letter dated January 31, 2003, the Complainantís solicitors exhibit a copy of the only page at the website for the Domain Name, and point out that it diverts to a website operated by uk2.net. This seems to offer a range of commercial services related to computers.
As indicated above, no Response has been filed by the Respondent
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(i) the domain name is 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 interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As to element (i) the Domain Name is clearly confusingly similar to the Trademark. Given the distinctive nature and worldwide reputation of the Trademark, the mere addition of the definite article cannot serve to distinguish the Domain Name from the Trademark. If anything, it serves, in this case, to confer emphasis on the Trademark (i.e. the Harrods). The Complainant has clearly established element (i) above.
B. Rights or Legitimate Interests
As to element (ii), the Policy sets out the following, non-limitative, circumstances which would enable a Respondent to demonstrate he has rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is nothing before the Panelist to suggest that any of these circumstances apply in this case. There has, of course, been no Response in this case, but the Panel is unable to conceive how the Respondent could establish he had any rights or legitimate interest in the Domain Name. Element (ii) above is, in the Panelís opinion, established.
C. Registered and Used in Bad Faith
So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the ICANN Policy applies.
Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as follows:-
"by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] 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."
The matter referred to in paragraph 5A.(vii) above tends to suggest that the Respondent had the intention of attracting people looking up the Domain Name to the "uk2.net" site referred to, and presumably that site is operated for commercial gain.
It is in respect of the issue of "bad faith" that the evidence in this case is very limited.
Again, however, given the reputation of the Trade Mark, it is difficult to see how the Trade Mark could have been registered and used in good faith. Accordingly, the Panelist concludes that the Respondent registered and has been using the Domain Name in bad faith.
While not relevant to his decision in this case (where it is manifest that the Respondentís conduct, minimal as it may be, is wholly unmeritorious) the Panel would like to comment on the plethora of WIPO decisions on which the Complainant (or perhaps more accurately its solicitors) seeks to rely. It is absurd to suggest that a panelist, having to decide whether "theharrods" is confusingly similar to "harrods" requires the assistance of some 19 prior WIPO decisions. First, and more important, the decision to be made by the Panel depends on the facts of this case. Second, the citation of so many cases is calculated to suggest that the Complainant is uncertain about the merits of its case.
In total, the Panel has counted some 46 references in the Complaint (some may in fact be more than one reference to the same decision). The Policy is designed to provide a quick and inexpensive procedure for disposing of relatively clear disputes (if they are not clear, law courts are more appropriate tribunals). The cost to the Complainant of a Complaint with 46 references must be not inconsiderable, and this panelist would like to see the practice of citing any but the most pertinent of decisions abandoned forthwith.
In contrast to his comments above, the Panelist would like to make it clear that he does approve of the citation of the earlier decisions which attest to the fame of the Trademark.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <theharrods.com> be transferred to the Complainant, Harrods Limited.
Christopher P. Tootal
Dated: May 23, 2003