WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Title Domains
Case No. D2003-0724
1. The Parties
The Complainant is Harrods Limited, Knightsbridge, London, United Kingdom of Great Britain and Northern Ireland, represented by DLA Solicitors.
The Respondent is Title Domains, of Miami, Florida, United States of America.
2. The Disputed Domain Names and Registrar
The disputed domain names are <chicagoharrods.com> and <harrodschicago.com> registered with TierraNet d/b/a Domain Discover (hereinafter Domain Discover).
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 Domain Discover a request for registrar verification in connection with the domain names at issue. On September 15, 2003, Domain Discover 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 dated September 23, 2003, the Complainant filed an amendment to the Complaint on September 26, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Complaint to the Respondent, and the proceeding commenced on September 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 31, 2003.
The Center appointed Mr. Albert Agustinoy Guilayn as the sole panelist in this matter on November 11, 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
The Complainant is a UK private company by shares with its principal place of business in London, England. The Complainant and its predecessors have operated the famous Harrods Department Store located in the Knightsbridge area of London since 1849, having obtained international reputation.
Indeed, the Harrods Department Store provides over one million goods and fifty separate services having become one of the main tourism attractions in London. Moreover, said department store has been promoted internationally for many years and its international reputation has been consolidated by extensive overseas exports, international mail orders as well as the introduction of satellite stores at major international airports and department stores.
Currently, the Complainant has extended the use of the HARRODS trademarks to product ranges other than the retail of goods, such as banking, real estate, airlines and online casinos.
The Complainant has used, registered or applied to register the trademarks "HARRODS" in many countries around the world for a wide variety of goods and services. The Complainantís trademark portfolio includes, inter alia, the following registered trademarks:
- UK Trademark No. 1266810 registered on May 10, 1986, for the mark "HARRODS" for various goods in Class 16.
- UK Trademark No. 2245927 registered on September 19, 2000, for the mark "HARRODS" for various services related to telecommunications and the Internet in Class 35.
- Community Trademark 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 Trademark No. 1354693 registered on August 13, 1985, for the mark "HARRODS" for services in Class 42.
- US Trademark No. 2115836 registered on November 25, 1997, for a variety of goods in Class 25.
As a result of the quality of the Complainantís goods and services, the volume of its customers and the extensive advertisement and promotion of the HARRODS trademarks, said trademarks have become well-known both inside and outside the United Kingdom. Such an international goodwill and reputation has been confirmed by many previous decisions adopted under the Policy (Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544; Harrods Limited v. Harrods Closet, WIPO Case No. D2001-1027; Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162 or Harrods Limited v. Dijitaldjs, WIPO Case No. D2001-1163, for example). Indeed, said decisions have considered the Complainantís HARRODS trademark as well-known and famous, a status that the Panel considers that the Complainant has been able to prove in this proceeding.
The Complainant has been active on the Internet for years through the corporate sites of the companies belonging to the Harrods Group. In particular, the Complainant has operated its corporate website (located at "www.harrods.com") since February 14, 1999. At present, the online store operated through said web site provides a wide variety of goods and services.
The Panel has not obtained clear information on the Respondent, as he has not filed a response to the Complaint, apart from the contact information included in the Whois database. At this regard, it is important to state that the Complainant has provided the Panel with evidences of the falseness of the postal address and the telephone and fax number posted by the Respondent as contact data in the above-mentioned database.
The domain names <harrodschicago.com> and <chicagoharrods.com> were registered by the Respondent on February 21, 2002, and November 14, 2002, respectively with Domain Discover. Since its registration, the Respondent has not included or developed any specific content for the web pages linked to the disputed domain names. On the contrary, said domain names are directed to a web site where domain names management services are offered. Said services are rendered by "buydomains.com", apparently a US company with no actual relationship with the Respondent.
5. Partiesí Contentions
The Complainant contends that:
- The disputed domain names are confusingly similar to the HARRODS trademarks on which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The Respondent registered and uses the disputed domain names in bad faith; and
- As a consequence of the above-mentioned findings, the disputed domain names should be transferred to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove the Panel the concurrence of three circumstances in order to obtain the transfer of the disputed domain names.
Said circumstances are the following ones:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent does not hold rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used by the Respondent in bad faith.
Consequently, the Panel shall further analyze the concurrence or not of the above-mentioned circumstances in the present case.
A. Identical or Confusingly Similar
The first circumstance that must be given is that the disputed domain names may be considered as identical or confusingly similar to the HARRODS marks in which the Complainant holds rights.
The comparison between the disputed domain names and the Complainantís trademarks shows two main differences between them:
- The domain names are composed of the mark HARRODS combined with the geographical term "CHICAGO" (<chicagoharrods.com> and <harrodschicago.com>).
- The domain names do include the ".com" suffix.
In regard of the first difference, the Panel considers that the disputed domain names clearly relate to the HARRODS marks. In this sense, in the disputed domain names the geographical term is just a complement to the HARRODS mark. Actually, due to their composition, the disputed domain names seem to refer them to the Complainant and the above-mentioned city, intuitively linking both of them.
Thus, the disputed domain names could lead the Internet users to confusion (at least for a moment), due to the inclusion of a well-known trademark combined with a geographical term. Such an approach has been applied in a great number of decisions rendered under the Policy. In this sense, for example, in AT & T Corp. v. Worldclassmedia.com, WIPO Case No. D2000-0553, the Panel stated: "A geographic qualifier is insufficient to prevent the composite domain name from being confusingly similar to Complainantís marks", being this argument fully applicable to the present case (see also, inter alia, Bloomberg LP v. Sein MD, NAF Case No. FA0101000096487; America Online, Inc. v. Asia On-Line This Domain for Sale, NAF Case No. FA0004000094636; Wal-Mart Stores, Inc. v. Ozurls, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-Mart Store, Inc. v. Yongsoo Hwang, NO-WALMART AND NO-WALMART.COM, WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050; Viacom International, Inc. v. Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118 or Jefferson Smurfit Group PLC v. Stephen Davidson, Inc. WIPO Case No. D2000-1117).
The second difference between the HARRODS trademarks and the disputed domain names is the inclusion of the ".com" suffix in the latter ones. Such an inclusion is due to the current technical specificities of the Domain Name System. Therefore, said difference should not be taken into account in order to evaluate the identity or similarity between the disputed domain names and the Complainantsí trademarks. In this sense, see, for example, New York Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc. et al.,WIPO Case No. D2003-0172.
As a consequence of what has been stated, the Panel considers that the disputed domain names are confusingly similar to the "HARRODS" trademarks owned by the Complainant. Therefore, the Panel considers that the condition set out by paragraph 4(a)(i) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
In second place, paragraph 4(a)(ii) of the Policy requires that the Respondent does not hold rights or legitimate interests on the disputed domain names. At this regard, paragraph 4(c) of the Policy foresees a set of circumstances where the Respondent may be considered as holding said rights or interests. Those circumstances are:
- To have used the disputed domain name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and services; or
- To have been commonly known by the disputed domain name, even when no trademark or service mark right has been acquired; or
- To make a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, none of the above-mentioned circumstances seems to apply. Indeed, the Respondent has received several cease-and-desist letters from the Complainant, without answering them in order to defend its right to fairly use the disputed domain names.
Additionally, it is important to remind that, as stated before, "HARRODS" may be considered as a well-known trademark in the USA (where the Respondent seems to be located). Therefore, it is quite unlikely that a "coincidence" exists in the present case. On the contrary, it seems that the Respondent was clearly aware of the existence of the Complainantís trademarks and did not register the disputed domain names for other purposes than to include the Complainantís trademarks in said domain names. Actually, the Panel considers quite unlikely that the Respondent holds legitimate rights or aims at developing fair activities by means of the disputed domain names when it has not used them since their registration, about two years ago from this moment.
Finally, the Panel wants to emphasize the fact that the Respondent has not filed any response to the Complaint in this proceeding, an attitude that seems to prove its clear absence of rights or legitimate interests in the disputed domain names or at least its lack of interest in demonstrating the contrary.
In relationship with this circumstance, many decisions adopted under the Policy (see, for example Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 or Adventis Pharmaceuticals Products, Inc. v. Nejat, WIPO Case No. D2003-0401), have stated that by defaulting and failing to respond, the Respondent fails to offer the Panel evidence of any of the circumstances foreseen by paragraph 4(c) of the Policy or any other evidence of its rights or legitimate interests in the disputed domain names.
The Panel considers that this approach is fully applicable to the present case. Indeed, the Respondent has not refuted any of the evidence provided by the Complainant in regards of its lack of rights or legitimate interests in the disputed domain names.
As a consequence, the Panel considers that the Respondent does not hold rights or legitimate interests in the disputed domain names and that the second condition set out by the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The last of the elements foreseen by paragraph 4(a) of the Policy is that the Complainant proves that the Respondent has registered and uses the disputed domain names in bad faith.
In regards of this issue, it is important to remind that both conditions are cumulative, as stated in many decisions adopted under the Policy (World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 or Robert Given Bogen, WIPO Case No. D2000-0001, for example). Consequently, the Complainant must clearly show that: (i) the disputed domain names were registered by the Respondent in bad faith, and, (ii) the disputed domain names have been used by the Respondent in bad faith.
Further, the concurrence of said circumstances in the present case shall be analysed.
i. Registration of the disputed domain names in bad faith
First of all, the Complainant must prove that at the moment of registering the disputed domain names, the Respondent was guided by bad faith purposes. At this regard, once again it is important to remind that, due to its extensive advertising campaigns and the shipment of orders of goods to the USA, "HARRODS" is a well-known trademark in said territory. Consequently, it seems quite clear that, given the circumstances proved before the Panel, the only feasible possibility seems to be that the Respondent registered the disputed domain names in order to unfairly benefit from the Complainantís trademarks.
Moreover, some of the information provided by the Respondent in the Whois database seems to be false. Such a fact shows clear evidences of bad faith by the Respondent as it has adopted deliberate steps in order to avoid that anyone may know its real identity and contact information (At this regard see, for example, Consitex SA et Al. v. Lionheart Securities Corp., WIPO Case No. D2003-0285; Royal Bank of Scotland Group v. Stealth Commerce, WIPO Case No. D2002-0155 or Home Director, Inc. v. Home Director, WIPO Case No. D2000-0111). Such a behavior seems to be far from a bona fide conduct and, joint with the argument indicated before, leads the Panel to consider that the Respondent registered the disputed domain names in bad faith.
ii. Use of the disputed domain names in bad faith
In regards of this second condition, the Complainant has considered that the Respondent's use of the disputed domain names may fit within several of the categories of "bad faith" as foreseen by the Policy. In order to evaluate the existence of said bad faith, paragraph 4(c) of the Policy must be taken into account. Said paragraph states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Moreover, many decisions adopted under the Policy have considered that the list of circumstances foreseen by the above-mentioned paragraph is not based on a numerus clausus basis, but it is open (See, for example, Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010; Audi AG v. Hans Wolf, WIPO Case No. D2001-0148 or Wal-Mart Stores, Inc. v. Su Rong Ye, WIPO Case No. D2002-0771). For that reason, any other circumstance that may give the Panel clear evidence of the Respondentís bad faith must also be taken into account.
In first place, the Complainant claims that the Respondent's use of the domain name may be considered as an infringement of paragraph 4(c)(iv) as, according to the Complainant, the Respondent is trying to intentionally attract Internet users to its own web sites for commercial gain. Nonetheless, the Panel believes that such a paragraph should not apply in the present case as the Respondent has not apparently developed any commercial activity through the web sites linked to the disputed domain names. On the contrary, since their registration by the Respondent, said domain names have been "parked" in a third party web site ("buydomains.com"), whose owner does not seem to be associated or linked anyhow to the Respondent.
Thus, it seems quite unlikely that the Respondent has obtained any "commercial gain" from the visits of the Internet users to the web pages linked to the disputed domain names and, as a consequence, this argument must be rejected.
In second place, the Complainant considers that the Respondentís "passive use" of the disputed domain names may be deemed as a bad faith behavior as foreseen by the Policy. As previously stated, since their registration, the disputed domain names have indeed been "parked" by the Respondent, without being actively used.
Such a "passive use" may indeed be considered as an infringement of the above-mentioned paragraph if the circumstances applying to this case are taken into account. Indeed, if the Panel adopts a factual approach to the Respondentís behavior (similar to the one applied in many decisions adopted under the Policy such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232 or eBay, Inc. v. Sunho Hong, WIPO Case No. D2000-1633), it is quite clear that the "passive use" held by the Respondent must be considered "bad faith" as considered by the Policy. In order to get to this conclusion the following facts must be taken into account:
- The HARRODS trademark is well known in the US, where the Respondent seems to be located.
- The Respondent has not replied to the letters sent by the Complainant, nor has filed a response to the Complaint filed in this proceeding. In consequence, the Respondent has not provided the Panel with any element or evidence of good faith in regards of the registration and use of the disputed domain names.
- The Respondent did apparently post false contact information on the Whois database when it registered the disputed domain names and has kept it up to date. Such a behavior constitutes a clear breach of Article 4 of the Domain Discoverís registration agreement, which does expressly require the registrant to provide accurate and reliable contact information and promptly correct and update it.
Taking into account the above-mentioned arguments, the Panel concludes that the evidence shown by the Complainant regarding the Respondentís passive holding of the disputed domain names satisfy the requirements foreseen by the Policy.
As a consequence, the Panel considers that the Complainant has been able to prove that the Respondent registered and has used the disputed domain names in bad faith, fulfilling the requirements set out by paragraph 4(a)(iii) of the Policy.
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 names <harrodschicago.com> and <chicagoharrods.com> be transferred to the Complainant.
Albert Agustinoy Guilayn
Dated: November 25, 2003