WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Sean Kwon
Case No. D2003-0722
1. The Parties
The Complainant is Harrods Limited, Knightsbridge, London, United Kingdom of Great Britain and Northern Ireland, represented by DLA Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Sean Kwon, of Haang-dong, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <iharrods.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2003. On September 15, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On September 15, 2003, Tucows 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 October 1, 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 October 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2003.
The Center appointed Hariram Jayaram as the sole panelist in this matter on November 12, 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
In its Complaint, the Complainant states that it 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. Its 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. 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. In terms of Internet presence, the Complainant has been active on the Internet for some years and in particular, has actively operated the Internet website "www.harrods.com" since February 14, 1999. As a result of the quality of its goods and services, the tremendous volume of its customers, and the extensive advertisement and promotion of the 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 it. No doubt as a direct consequence of such reputation it 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.
The Complainant 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; travelling 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. It is the owner of a worldwide trade mark portfolio and its trade marks have become synonymous with a wide variety of high-quality luxury products and services. Its trade mark portfolio includes the following registered trade marks:
- UK Trade Mark No. 1266810 registered on May 10, 1986, for the mark HARRODS for various goods in Class 16.
- UK Trade Mark No. 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 departmental store through the said online media or by means of telecommunications.
- Community Trade Mark No. 62414 registered on April 1, 1996, for the mark HARRODS for a wide variety of goods and services in Classes 1 to 42.
- US Trade Mark No. 1354693 registered on August 13, 1985, for the mark HARRODS for services in Class 42 including retail mail order services of consumer goods.
- US Trade Mark No. 2115836 registered on November 25, 1997, for the mark HARRODS for goods in Class 25 including footwear, headgear and clothing for children, men and women (including leather sportswear, jogging suits, swimsuits, wet suits and waterproofs).
5. Parties’ Contentions
In the Complaint, the Complainant contends that the disputed domain name is confusingly similar to its trade marks. The only difference between the disputed domain name and its HARRODS trade marks is the addition of the letter "i". Since the HARRODS mark instantly evokes the famous Knightsbridge department store and its related products and services, adding "i" merely suggests that the webpage at "www.iharrods.com" is connected to the Complainant. Although when Internet users enter the URL "www.iharrods.com" they are informed that the host cannot be accessed, the commercial impression conveyed to Internet users by this webpage is that the Respondent's services are sponsored, endorsed or affiliated with it. The disputed 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 HARRODS marks, in which the Complainant enjoys exclusive rights. The disputed domain name incorporates a non-distinctive letter and is confusingly similar to the Complainant's trade marks.
It does not believe that the Respondent can demonstrate any circumstances that would evidence rights to and legitimate interests in the disputed domain name. No indication of use of (or demonstrable preparations to use) the disputed domain name in connection with a bona fide offering of goods or services has been provided by the Respondent. The disputed domain name does not resolve to any website and when an Internet user enters the URL "www.iharrods.com", he is informed that the host "www.iharrods.com" cannot be accessed. There is, therefore, no information to suggest a legitimate right to use the name "Harrods" by the Respondent. He has failed to respond to the letters sent by the Complainant's solicitors and it is submitted that a bona fide offering of goods or services cannot be made in view of the Complainant and its trade marks. The disputed domain name could not have been chosen for any reason other than its association with the Complainant's trade marks, in order to attract, for commercial gain, Internet users to the Respondent's website. The Respondent must have been aware of the Complainant at the time of registration of the disputed domain name. In view of the fame of the HARRODS mark, he cannot make a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers or to tarnish the Complainant's trade mark. He has not been commonly known by the name "Harrods". It is the name in which the domain name is registered, i.e. Sean Kwon, by which he is commonly known.
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. Where a respondent cannot use a domain name without violating the complainant's rights under the applicable law, it is accepted that bad faith exists even if the respondent has done nothing but register the domain name. If the complainant's mark is distinctive, as in the case of the HARRODS mark, bad faith is found if it is unlikely that the respondent would have selected the domain name without knowing of this reputation. Use of the disputed domain name is therefore unnecessary for a finding of bad faith and the Complainant considers that the Respondent has both registered and used the disputed domain name in bad faith. It also considers that the Respondent has no rights or legitimate interests in the disputed domain name, which is confusingly similar to trade marks in which the Complainant has rights.
The Complainant relies on a number of past WIPO decisions to support its contentions.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant claims rights in HARRODS. To show that it is the owner of the trademark HARRODS, it has produced extracts relating to the registration of the UK Trade Mark Nos. 1266810 and 2245927 in Classes 16 and 35, Community Trade Mark No. 62414 in Classes 1 to 42 and US Trade Mark Nos. 1354693 and 2115836 in Classes 42 and 25. HARRODS is a well-known trade mark and enjoys substantial goodwill and reputation.
The Panel finds that the disputed domain name is confusingly similar to the trademark HARRODS. Addition of the letter "i" does not change this fact.
B. Rights or Legitimate Interests
The Complainant asserts that there is no evidence of use or preparation to use the disputed domain name by the Respondent. The Respondent is not commonly known as "HARRODS". He is commonly known as Sean Kwon. In view of the fame of the HARRODS mark, the Respondent cannot make use of the disputed domain name legitimately for a non-commercial or fair purpose. The Respondent has not availed himself of his rights to respond to the Complaint. The Panel concludes that the Respondent has no evidence to rebut the assertion of the Complainant and that he has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent has registered the disputed domain name despite having no connection with the trademark HARRODS. He has chosen to adopt one of the world's well-known trade marks as his domain name but has made no preparations to use it. His conduct and passive holding of the disputed domain name amounts to opportunistic bad faith.
The Panel finds that there is bad faith on the part of the Respondent.
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 <iharrods.com> be transferred to the Complainant.
Dated: November 19, 2003