WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Harrods Limited v. Pete Lormer

Case No. D2003-0504

 

1. The Parties

The Complainant is Harrods Limited of Knightsbridge, London, United Kingdom of Great Britain and Northern Ireland, represented by DLA-Technology Media & Communications of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Pete Lormer of Brooklyn, New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <harods.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 25, 2003. On June 25, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 2, 2003, eNom 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, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 22, 2003. The Center verified that the Complaint together with the amendment to 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 July 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 20, 2003.

The Center appointed Leon Trakman as the Sole Panelist in this matter on September 2, 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 and Partiesí Contentions

A. Complainant

The Complainant is the owner, for the past 150 years, of goodwill and reputation in its name, HARRODS and in its related trademarks. Since about 1849, the Complainant and its predecessors have operated Harrods Department Store in Knightsbridge, London, England. The Harrods Department Store has been promoted internationally for many years and includes significant overseas exports and an international mail order business. The Complainant also has introduced satellite HARRODS 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, its goodwill and reputation includes, among others, Harrods Estates, Harrods Bank and Harrods Casino Online. The Complainant also has actively promoted its business on the Internet for some years. In particular, it has actively operated the Internet website "www.harrods.com" since February 14, 1999.

The Complainant contends that, as a result of the quality of the Complainantís goods and services, the volume of its customers, and the extensive advertisement and promotion of its HARRODS mark, the HARRODS mark 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. It also contends that, as a direct consequence of its reputation, it has been the Complainant in a number of domain name disputes; but that it has always been successful in the retrieval of domain names which have sought to take unfair advantage of its world famous brand. The Complainant cites in support the following WIPO decisions: 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; Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162; and British Telecommunications Plc., v. One in a Million Limited [1998] 4 All ER 476 (CA).

The Complainant contends that it has used, registered or applied to register the mark HARRODS in many countries around the world for a wide variety of goods and services. Such goods and services include for example: games and playthings; gymnastics and sporting articles; clothing, footwear and headgear; traveling bags; parasols and walking sticks; whips, harness and saddlery; leather goods; entertainment; sporting and cultural activities; cafeteria services; fashion consultation; photography; beauty and hairdressing salons; banking and brokerage services; real estate management and insurance.

The Complainant contends further, that it is the owner of a worldwide trademark portfolio and the Complainantís trademarks have become synonymous with a wide variety of high-quality luxury products and services. The Complainant provides a list of its registered trademarks, including attachments.

As its first ground, the Complainant contends that the domain name <harods.com> is confusingly similar to the Complainantís name HARRODS; and that the only difference between the Respondentís domain name and the Complainantís HARRODS trademarks is the omission of one "r" from the word "harrods." According to the Complainant, since the HARRODS mark instantly evokes the famous Knightsbridge department store and its related products and services, merely omitting one "r" from the word "harrods" in the domain name suggests that the website at "www.expedia.com" is connected to the Complainant.

The Complainant contends further that, when Internet users enter the URL "www.harods.com" they are taken to the homepage of Expedia at the URL "www.expedia.com." However, the commercial impression conveyed to those users is that the Respondentís services are sponsored, endorsed by or affiliated with the Complainant. The Complainant adds that the Respondentís domain name was undoubtedly chosen by the Respondent in an effort to free-ride off the goodwill associated with the HARRODS marks, in which the Complainant enjoys exclusive rights. The Complainant concludes, on this ground, that Respondentís domain name suggests a false sense of origin or sponsorship for any associated products, goods or services.

The Complainantís second ground is that the Respondent has no legitimate interest in the HARRODS mark. The Complainant alleges that the Respondent cannot demonstrate any circumstances that would provide evidence of any rights to and legitimate interests in the domain name for the purpose of satisfying paragraph 4(c) of the Policy. It alleges that previous respondents against which it was the Complainant also provided no indication of use of (or demonstrable preparations to use) the domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The Complainant argues, as well, that there is no information on this website to suggest a legitimate right to use the name "Harods."

The Complainant draws attention to a pattern of conduct. It alleges that previous registrants failed to respond to the letters sent by the Complainantís solicitors; and that each previous registrant engaged in a pattern of conduct whereby upon receipt of such letters, the domain name was immediately transferred/sold. The Complainant maintains, in light of this, that alerting the Respondent on this occasion through correspondence would repeat the cycle of transfer/sale, and by inference, defeating the purpose of the Complaint. As a result, the Complainantís solicitors did not contact the Respondent prior to filing this Complaint. The Complainant provides evidence if this allegation by indicating that the Respondentís contact details set out in the WHOIS report are identical to those of the first registrant of the domain name.

The Complainant concludes that the Respondent cannot make a bona fide offering of goods or services in view of the Complainant and the Complainantís trademarks; that the disputed domain name could not have been chosen for any reason other than because of its association with the Complainantís trademarks; and that the purpose of the registration was to attract, for commercial gain, Internet users to the Respondentís website.

The Complainantís third ground is that the domain name in dispute was registered and is being used in bad faith. In particular, the Respondent 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 Complainantís marks as to the source, sponsorship, affiliation or endorsement of the Respondentís website or location or of a product or service on the website or location (paragraph 4(b)(iv) of the Policy). The Complainant maintains that the confusion caused by the Respondent is described as "initial interest confusion" arising from the deliberate diversion of Internet users who intend to access the Complainant's website and by the Respondent taking unfair advantage of the Complainantís goodwill.

The Complainant draws attention to Paragraph 4(b) of the Policy which sets out a non-exclusive list of factors that evidence bad faith; and maintains further, that previous WIPO Panel decisions have explicitly held that bad faith is not limited to the factors set out in that Paragraph. In particular, where a respondent cannot use a domain name without violating a complainantís rights under the applicable law, it is accepted that bad faith exists even if the Respondent has done nothing but register the domain name. The Complainant maintains further that the use of misspellings alone are sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy. The Complainant alleges that, if its mark is distinctive, bad faith is found if it is unlikely that the Respondent would have selected the domain name without knowing of this reputation.

The Complainant concludes that the Respondent has registered the domain name in bad faith, that this constitutes bad faith, that the Respondent has no rights or legitimate interests in the disputed domain name and that the domain name is confusingly similar to trademarks in which the Complainant has rights.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

5. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <harods.com> is confusingly similar to the Complainantís trademarks. There is only one difference in spelling between the Respondentís domain name and the Complainantís HARRODS trademarks, namely, the omission of one "r" from "harrods." Given that the Complainant is internationally known as HARRODS, the omission of one "r" from "harrods" in the disputed domain name, the use of the domain name in dispute is likely to create the distinct impression on Internet users that the website at "www.expedia.com" is connected to the HARRODS brand. Internet users are also likely to assume that Respondentís services are identical to, synonymous with, affiliated to, or otherwise identified with the Complainant. The Panel is persuaded by a plethora of prior cases that the marginal variation of a well known brand through misspelling invites typo squatting by which respondents use confusingly similar domain names to famous trademarks. See eg. Wachiova Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Xerox Corp. v. Stonybrook Investments, Ltd., WIPO Case No. D2001-0380; The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Herreveld, WIPO Case No. D2000-0776; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Arthur Guinness Son & Co (Dublin) Limited v. Dean Macesic, WIPO Case No. D2000-1698; Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Wallk a/k/a Cupcake Party, WIPO Case D2000-0330; Oxygen Media, LLC v. Primary Source, WIPO Case D2000-0362; Nicole Kidman v. John Zuccarini, a/b/a Cupcake Party, WIPO Case No. D2000-1415; Hewlett-Packard Co .v. Cupcake City, File No. FA000200093562; The Nasdaq Stock Market Inc v. Shawn Cain d/b/a Star Inc., WIPO Case No. D2002-1125; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty Ltd., WIPO Case No. D2001-0110, Christieís Inc. v. Tiffanyís Jewelry Auction Inc., WIPO Case No. D2001-0075 and Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo WIPO Case No. D2001-0020.

The Panel also notes domain name disputes in which the Complainantís marks have been "targeted" for use by confusingly similar domain names, including misspellings and that HARRODS have been a complainant in some of these cases. See e.g., Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456; Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162; Harrods Limited v. Ronald Krupinski, WIPO Case No. D2002-0642; Harrods Ltd. v. Dijitaldjs, WIPO Case No. D2001-1163.

B. Rights or Legitimate Interests

The Respondent has no legitimate interests in the domain name sufficient to satisfy the purpose of paragraph 4(c) of the Policy. The domain name is not being used in connection with a bona fide offering of goods or services in compliance with paragraph 4(c)(i) of the Policy. The website to which the domain name resolves does not contain any information that reasonably demonstrates any legitimate right to use the name "Harods"; and the domain name bears no reasonable relationship to the business of the Respondent. The registration of the domain name to direct Internet traffic to the Respondentís website also likely creates the distinct impression in the minds of those users that there is an association between the Respondent and the Complainantís established brand. See e.g. Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441.

It is evident, on the facts that the Respondent is not, nor has been, historically associated with the name "Harods" as set out in paragraph 4(c)(ii) of the Policy. It is also evident that the choice of that name bears no reasonable relationship to either the name of the registrant, or to the registrantís business.

The Respondentís illegitimate use of the domain name is also linked to a prior pattern of illegitimate conduct. The Complainant provides evidence that previous registrants of confusingly similar domain names to its mark engaged in a comparable course of dealings. On receipt of a letter of complaint from the Complainantís solicitors, the domain name was immediately transferred/sold to a third party. The Complainant indicates that it failed to contact the Respondent prior to filing the instant complaint, specifically to avoid a repeat transfer/sale in the instant case. In further justifying its failure to notify the Respondent, the Complainant establishes that the Respondentís contact details as set out in the WHOIS report are identical to those of the first registrant of the domain name, Webinajiffy, as set out in the WHOIS report dated August 29, 2002. While reluctant to encourage complainants generally not to notify Respondents of an allegedly infringing domain name, the Panel accepts the explanation provided in this case on its particular facts. In particular, where there is evidence of a consistent pattern of conduct by which a respondent transfers or sells a domain name on being notified by a prospective complainant that the name is in dispute, and that transfer or sale renders the cancellation or transfer to the Complainant of that domain name impossible or impracticable, the presumption that a complainant is required ordinarily to notify the Respondent may be rebutted. This presumption should not likely be invoked in order to ensure that prospective respondents are able to answer allegations against them, and to avoid them being subject to summary domain name determinations when they have not received a prior opportunity to respond to those allegations.

C. The domain name has been registered and is being used in bad faith

The Panel concludes that the domain name in dispute was registered and used in bad faith. Using negative reasoning, that domain name could not reasonably have been chosen for any reason other than in order to use the Complainantís trademarks to attract, for commercial gain, Internet users to the Respondentís website. Doing so constitutes, not only an illegitimate use of the disputed domain name, but also bad faith use in this case. For the Panel to hold otherwise would be to undermine Complainantís brand by misleadingly identifying its brand with the Respondent. This relationship between illegitimate use of a domain name and bad faith is evident in a series of WIPO decisions, including those involving the HARRODS name. See e.g. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO Case No. D2000-1319; Xerox Corp v. Stonybrook Investments, Ltd., WIPO Case No. D2001-0380; Harrods Ltd. v. Dijitaldjs, WIPO Case No. D2001-1163; Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544; Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162; Arthur Guinness Son & Co (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; e-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369; The Nasdaq Stock Market Inc v. Shawn Cain d/b/a Star Inc, WIPO Case No. D2002-1125; Pig Improvement Co. v. Platinum Net, Inc., WIPO Case No. D2000-1594.

The Respondentís bad faith arises, too, from a deliberate intention to create a false sense of origin or sponsorship for the Respondentís products, goods and services. Moreover, the Respondent intentionally attempted to attract for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion among Internet users between the Complainantís marks and the source, sponsorship, affiliation or endorsement of the Respondentís website or location, or of a product or service on the website or location. The Respondent intended to free-in bad faith, on the goodwill of the HARRODS marks in which the Complainant enjoys exclusive rights. In engaging in this practice, the Respondentís action is contrary to paragraph 4(b)(iv) of the Policy.

The Respondentís bad faith is also inextricably linked to the Respondentís initiating conduct in registering this domain name with the deliberate intention of causing Ďinitial interest confusioní between the Complainantís famous marks and the Respondentís services and products. The Panel acknowledges a prior Panel determination that such "deliberate creation of initial interest confusion and the consequent diversion of Internet traffic is sufficient to establish bad faith on the Respondentís part." See e.g. Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128.

The Respondent has acted in bad faith in the instant case in consequence of reasonable inferences arising from registering that domain name in bad faith, as distinct from the requirement that it use that name subsequent to registration. Paragraph 4(b) of the Policy sets out a non-exclusive list of factors evidencing bad faith, but allows for the development of further factors. Moreover, prior WIPO panels have clearly recognized additional factors in determining such bad faith, not limited to those listed in paragraph 4(b) of the Policy. See e.g. Harrods Ltd v. Dijitaldjs, WIPO Case No. D2001-1163; Alta Vista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548.

The extension of such bad faith to include the current case, beyond those factors listed in Paragraph 4(b) of the Policy is clearly requisite. Negatively phrased, the Respondent has exercised bad faith by the very act of not being reasonably able to use that name without having the effect of violating the Complainantís name and trademarks. Were the Respondent to do nothing beyond register the name, that act of registration itself would constitute bad faith because a bad faith use is an unavoidable inference, indeed consequence, of the act of registration itself. See further, The Nasdaq Stock Market Inc. v. Shawn Cain d/b/a Star Inc., WIPO Case No. D2002-1125; Playboy Intíl v. SAND WebNames-For Sale, WIPO Case No. D2001-0094; General Electric Co. v. Fisher Zvieli a/k/a Zvieli Fisher, WIPO Case No. D2000-0377; Dell Computer Corporation v. MTOC.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363; Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441; Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; Xerox Corp v. Stonybrook Investments Ltd., WIPO Case No. D2001-0380; Harrods Limited v. Walter Trautner, WIPO Case No. D2001-1164; Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456; Harrods Ltd., v. Dijitaldjs, WIPO Case No. D2001-1163; Harrods Limited v. Coupon Corporation Inc., WIPO Case No. D2003-0105.

The Panel qualifies this holding immediately above in a key respect. Typo squatting does not constitute per se bad faith. However, typo squatting, as was clearly the case here, is strong evidence of bad faith, particularly where the act of registration so enables the Respondent to use that registration at the expense of the Complainantís good will and reputation. Once a complainant has adduced such evidence, as the Complainant clearly has done in the instant case, only the most formidable evidence to the contrary would rebut the strong presumption of bad faith use by the Respondent. Such a rebuttal would need to counter the ordinary inference that, in registering a domain name that so entices Internet users to the Respondentís site, the Respondent is relying in bad faith on the Internet userís recognition of the Complainantís well-known marks so as to promote the Respondentís services and products. There is no contrary evidence in the current case that reasonably infers that the Respondent was acting in good faith in the instant case.

Accordingly, the Panel holds that the Respondent has registered and used the disputed domain name in bad faith.

 

6. Decision

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, <harods.com> be transferred to the Complainant.

 


 

Leon Trakman
Sole Panelist

Dated: September 4, 2003