WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Chris Brick
Case No. D2003-0876
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, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Chris Brick of Saugerties, New York, United States of America
2. The Domain Name and Registrar
The disputed domain name <charlesharrod.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2003. On November 5, 2003, the Center transmitted by email to Wild West Domains, Inc., a request for registrar verification in connection with the domain name at issue. On the same day, Wild West Domains, Inc., 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 November 13, 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 November 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 9, 2003.
The Center appointed Gerd F. Kunze as the sole panelist in this matter on December 19, 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 the proprietor of the Harrods Department Store at London Knightsbridge. This store was founded in the 1840s, by Charles Henry Harrod and was taken over in 1861, by his son Charles Digby Harrod, who sold the business in 1889. The name "Harrods" continued to be used by the proprietors of the store
The Complainant is the owner of the mark (trademark and service mark) HARRODS in many countries all over the world and particularly of the following marks:
Community trademark No. 62414, registered April 1, 1996, for a wide range of goods and services in classes 1 to 42;
US trademark No. 1354693, registered August 13, 1985, for services in class 42, including retail mail order services of consumer goods;
US trademark No. 2115836, registered November 25, 1997, for goods in class 25, including footwear, headgear and clothing.
The Complainant is also the owner of the domain name <harrods.com> and has actively operated an extensive website under "www.harrods.com" since February 1999.
The submissions of the Complainant have been documented and have not been contested by the Respondent.
On June 29, 2003, the Respondent registered the domain name <charlesharrod.com> without using it for an own active website. Actually, the domain name was parked on websites operated by the Registrar or companies related to the Registrar, where domain names and related services are offered.
On August 5, 2003, the Representative of the Complainant sent a cease and desist letter to the Respondent, who replied that he would be willing to offer the domain name at a fair price and mentioned that he had incurred some expenses already with this name. On August 22, 2003, the Representative of the Complainant offered the out of pocket expenses of registration and the transfer. On August 27, 2003, the Respondent replied that he declined the offer, since the Complainant was not interested in any costs incurred by him other than the transfer and initial registration fee.
5. Partiesí Contentions
The Complainant submits that the mark HARRODS is internationally well-known for the famous Harrods Department Store in London, which is a mandatory stop for tourists visiting London, and that it has also been promoted internationally by exports and by an international mail order business. It has been confirmed in a number of Panel decisions, cited by the Complainant, that HARRODS is a famous mark. The Panelist agrees with the conclusions of these decisions based on his own knowledge of the notoriety of the Harrods Department Store.
The Complainant submits that therefore (A) the domain name <charlesharrod.com> is confusingly similar to a trademark in which it has rights; (B) the Respondent has no rights or legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainantís contentions. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainantís submissions, and all inferences that can reasonably be drawn therefrom (Rules, paragraph 14(b).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
a) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
b) the Respondent has no rights or legitimate interests in respect of the domain name; and
c) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name <charlesharrod.com> is not identical to the mark HARRODS in which the Complainant has rights. It consists in fact of a name that is identical to the name of the founder of the Harrods Store and to that of the founderís son.
However the Panel agrees with the Complainant that the domain name is confusingly similar to the mark HARRODS for the following reasons:
- The gtld .com cannot be taken into consideration when judging confusing similarity.
- The mark HARRODS is world-famous and instantly evokes the Harrods department store at Knightsbridge, London.
- The domain name <charlesharrod.com> consists of the common first name "Charles", which even is identical to the first name of both the founder of the Harrods Store and his son and successor, and the distinctive word "Harrod" that differs from the mark of the Complainant only by the omission of the "s" at the end of the name.
- The omission of the "s" may easily be overlooked and may also be considered to be a misspelling of the correct name "Harrods". As an example, when one uses the Microsoft Word Program, and types the name "Harrod", the Spelling and Grammar program underlines that name with red color as unknown to it and, when checking with the Speller, Microsoft Word proposes to replace "Harrod" by "Harrods".
- Persons interested in the history of the Harrods Store may inform themselves at the respective page at the Complainantís website where it is mentioned that the Store was founded by Mr. Charles Harrod (as documented in an Annex to the Complaint).
- It has been common in the UK to use for businesses and their products the name of the founder followed by an "s" in order to indicate that this is the business or product of the bearer of that name. Examples are "Selfridges", "Boots", "Baileys" and "Harrods". Even the Swiss Nestlé group was in the United Kingdom until the 1970ies known as "Nestleís" and the Swiss parent company had to undertake some effort in order to convince its British affiliate that its corporate brand and name "Nestlé" should be written in an identical manner everywhere. The same habit to use such a possessive "s" together with a name can be found in the United States; as an example Macysí department store may be mentioned.
An Internet user, being confronted with the domain name <charlesharrod.com> is therefore likely to either regard "charlesharrod" as a misspelling of "charlesharrods" (or even to overlook that the "s" is missing) or to believe that this domain name refers to a person, bearing the name Harrod, which is having some connection to the famous Harrods Store. This is true for a user knowing that the Store was founded by a Mr. Charles Harrod. Such users will therefore expect that the domain name leads them to a website operated by the proprietors of the Harrods Department Store, or by somebody connected with them.
B. Rights or Legitimate Interests
The terms "Harrods" and "Harrod" are not descriptive words, in which the Respondent might have an interest. "Harrods" is exclusively used and known worldwide to identify the Department Store of the Complainant. The Complainant has not consented to the Respondent's use of the domain name. Simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name.
There is no evidence that the Respondent has used the domain name <charlesharrod.com>. Particularly, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. According to the Complainant's submissions, the Respondent does not use (commercially or non-commercially) the domain name and has not demonstrated any preparations to use it, and he has not been commonly known by the domain name. The Respondent has not challenged any of these submissions. In Mondich v. Brown, WIPO Case No. D2000-0004, the Panel decision held that "It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts". This statement has been confirmed, amongst others, in the decisions Alcoholics Anonymous World Services Inc. v. Lauren Raymond, WIPO Case No. D2000-0007, and Metabolife International v. Robert Williams, WIPO Case No. D2000-0630. Indeed, Respondent's silence allows the interference that any evidence of the Respondent would not have been in his favor. This is confirmed by the fact that the Respondent in his reply to the Complainantís cease and desist letter did not make any reference to any use of the domain name.
The Panel concludes in application of Rule 14(b) that the Respondent has failed to submit any circumstances to demonstrate rights to or a legitimate interest in the domain name <charlesharrod.com> as requested under 4(c) of the Policy. The Panelist is therefore satisfied that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example the Policy mentions in paragraph 4(b)(i) registration of 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 mark or to a competitor for valuable consideration in excess of his documented out-of pocket costs directly related to the domain name.
A generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondentís out of pocket expenses in registering the domain name. The Panelist is satisfied that this test is fulfilled.
No doubt the Respondent was aware of the Harrods Department Store, when he registered the domain name <charlesharrod.com>. This can be deducted from the worldwide fame of this store but also from the fact that the Respondent chose a name as domain name to which he apparently has no connection and which happens to be the name of the founder of the Harrods Department Store and of the founderís son.
In response to the Complainantís cease and desist letter the Respondent wrote:
"I am very willing to offer you this domain name at a fair price of sale if you would like to acquire ownership. As I have incurred some expenses already with this name and would also like to avoid any costly litigation."
The Representative of the Complainant wrote back:
"My client is willing to pay your "reasonable" out-of-pocket expenses incurred in transferring the domain name. These amount to the initial registration fee and any transfer fee incurred. My client is not concerned with any other costs incurred by you in relation to your use of the domain name and it would therefore, not be appropriate for my client to reimburse these."
The Respondent replied:
"I appreciate your swift response and would rather not transfer the domain charlesharrod.com at this point in time. I was offering the surrender as a courtesy to your client in order to avoid any litigation costs to either party but since your client is not interested in any costs incurred by me other than the transfer and initial registration fee, I will have to decline your offer."
In both before cited communications the Respondent gave no indications whatsoever as to the nature of his costs other than the registration and transfer fees. It is indeed most unlikely that the Respondent had such other costs. As has been evidenced by the Complainant, the domain name <charlesharrod.com> was parked for free (together with the reference: "coming soon") at Mad Dog Domain & Cattle Company and also at GoDaddy.com, websites apparently operated by the Registrar Wild West Domains, Inc., (who is referred to at the two websites). With other words: Wild West Domains, Inc., offer for the registration fee the registration of the domain name plus a package of services, including a parked page. This is in the interest of the Registrar since such parked domain names lead to websites, which the Registrar may use for the promotion of its business. The Panel concludes from the first communication of the Respondent and these facts that the Respondent asked the Complainant for a price, described by him as "fair" that he expected to be in excess of his out of pocket expenses.
This is confirmed by the contents of the second mail of the Respondent, where he again stated that he had expected a price in excess of his registration and transfer costs, again referring to other costs incurred by him, without making any attempt to specify such other costs. When the Respondent declined the offer, he apparently still hoped for a better offer, because he wrote that he would rather not transfer the domain name "at this point in time". Such conditional refusal was no great risk for him, since registration of a domain name and parking at the GoDaddy.com site is offered for US$ 8.95, respectively US$ 7.95 and the promoted transfer price is US$ 6.95. Quite obviously the Respondent was not interested in transferring the domain name <charlesharrod.com> to the Complainant for such an unattractive offer. Even in his worst case scenario that, as a consequence of a Complaint, he would have to transfer the domain name <charlesharrod.com> to the Complainant without receiving any remuneration at all, the financial risk involved for him was so low that he could neglect it, when considering how to reply to the offer of the Representative of the Complainant. Thus he pursued his aim to receive some extra money in addition to the registration and transfer costs, by refusing the offer "at this point in time".
The Panel is therefore satisfied that the Respondent has registered the domain name primary for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the mark or to a competitor for valuable consideration in excess of his documented out-of pocket costs directly related to the domain name.
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 <charlesharrod.com> be transferred to the Complainant.
Gerd F. Kunze
Dated: January 2, 2004