WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. HDU Inc.
Case No. D2004-0093
1. The Parties
The Complainant is Harrods Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Jeremy Dickinson of Complainant's solicitors DLA, United Kingdom of Great Britain and Northern Ireland.
The Respondent is HDU Inc., Dayton, Ohio, United States of America.
2. The Domain Name and Registrar
The disputed domain name <harrodssalon.com> (Domain Name) is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2004. On February 4, 2004, the Center transmitted by e-mail to Dotster, Inc., a request for registrar verification in connection with the domain name at issue. On February 4, 2004, Dotster, Inc., transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing its administrative, billing, and technical contact details. On February 10, 2004, 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 February 10, 2004. On February 11, 2004, Dotster, Inc. forwarded to the Center an e-mail by which the Respondent, complaining of the registrar's failure to update the contact information on the Domain Name, stated that he had never received the WIPO notification since he had changed its e-mail address. The very same day the Center forwarded the Complaint to the Respondent's new e-mail address. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2004. The Response was filed with the Center on February 28, 2004.
The Center appointed Anna Carabelli as the Sole Panelist in this matter on March 15, 2004. 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.
The Panel's decision is due April 29, 2004.
4. Factual Background
The Complainant has been operating the world-famous Harrods Department Store in the Knightsbridge area of London for many years.
The Complainant has provided evidence (Attachment D to the Complaint) of three UK and one Community Trade Mark registrations for the name HARRODS owned by Complainant, namely
HARRODS UK Reg. No. 1266810 registered on May 10, 1986, in connection with international class of goods and services CL.16 (Renewal date May 10, 1993);
HARRODS UK Reg. No. 2245927 registered on September 19, 2000, in connection with international class of goods and services CL. 35;
HARRODS UK Reg. No. 1305593 filed on March 31, 1987, and registered on March 19, 1993, in connection with international class of goods and services CL. 42 (including beauty salons and hairdressing services);
HARRODS Community Trade Mark Reg. No. 62414 filed on April 1, 1996, and registered on October 23, 1998, in connection with international classes of goods and services CL 1 to 42.
The Complainant has further provided evidence (Attachment D to the Complaint) of two US trademark registrations for Harrods, namely:
HARRODS US Reg. No. 1354693 filed on January 3, 1984, and registered on August 13, 1985, in connection with international class of goods and services CL. 42 (including consumer products retail mail order services);
HARRODS US Reg. No. 2115836 filed on October 8, 1996, and registered on November 25, 1997, in connection with international class of goods and services CL. 25.
Furthermore, the Complainant has been the registrant of the domain name <harrods.com> since February 14, 1999 (Attachment C to the Complaint).
The Complainant has also submitted a printout of the Whois database according to which, as confirmed by the registrar verification response, the Respondent registered the Domain Name <harrodssalon.com> on July 11, 2001, and subsequently renewed it on June 15, 2003 (Attachment A of the Complaint).
A printout of the web page "www.harrodssalon.com" shows that the Domain Name identifies the website of the Respondent, Harrod's Designs Unlimited (HDU) which is operating a "Hair and Nail Salon" owned by Brenda Harrod and located in Beavercreek, Ohio (Attachment E to the Complaint).
The Respondent has provided evidence that on August 18, 1994, HDU was incorporated in the State of Ohio (Attachment A to the Response) and that Brenda Harrod Bohn, as incorporator, formed this corporation with the purpose of operating a beauty salon for services and retail products (Attachment B to the Response).
The administrative and technical contact for HDU resulting from the Whois database, namely Steve Bohn (who is also signing the Response), is Brenda Harrod's husband as of June 1994 (see the marriage certificate as Attachment C to the Response).
The Respondent has also submitted a copy of Harrod's Designs Unlimited's hair and nail salon advertisement published on the Yellow Pages (Attachment D to the Response) as well as a copy of an e-mail sent on May 16, 2002, to Ms. Gibbons of Hammond Suddards Edge in reply to her e-mail apparently sent on behalf of the Complainant (Attachment E to the Response). In this e-mail Steve Bohn stressed that the Domain Name has been registered to operate the Respondent's future website, that it is due to Brenda Harrod's name, that there was no attempt to confuse the Respondent's website to the Complainant's name and business or to use the Complainant's trademark for personal gain and that there was no interest in selling it.
5. Parties' Contentions
The Complainant contends that:
- the Complainant is the "owner of over 150 years of international goodwill and reputation in the name HARRODS" and since 1849, it has been operating "the world-famous Harrods Department Store in the Knightsbridge area of London, England";
- it provides a high number of goods and services which have been extended worldwide on the one hand thanks to associations with companies offering banking, estates and casino on-line services, and on the other hand by means of satellite stores in major International Airports and other stores located in Hong Kong and Japan;
- thanks to the quality of goods and services, the great number of customers and the extensive advertising and promotion of the registered trademark HARRODS, the latter, a "synonym of a wide variety of high-quality luxury products and services," has become famous worldwide and exclusively traceable to the Complainant;
- the Respondent's Domain Name is confusingly similar to the Complainant's registered trademark HARRODS; the addition of a descriptive word like "salon," is unable to avoid a likelihood of confusion with the trademark and suggests a connection or affiliation of the website "www.harrodssalon.com" to the Complainant;
- the Respondent has no right or legitimate interest in the Domain Name since 1.) there is no indication of the Domain Name being used in connection with a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy, 2.) the Respondent is not commonly known by the name "Harrods" (paragraph 4(c)(ii) of the Policy) and 3.) he does not make a legitimate non-commercial or fair use of the Domain Name in accordance with paragraph 4(c)(iii) of the Policy;
- the Domain Name has been registered and is being used in bad faith since the Respondent's intention is to deliberately create an "initial interest confusion" with the Complainant's well-known trademark to divert Internet users to its website for commercial gain;
- the Respondent has used in the layout of the web page the same colours, green and gold, which characterize the Complainant's trademark HARRODS;
- the Complainant's solicitors never contacted the Respondent prior to the commencement of the administrative proceedings, the Complainant being concerned with the fact that the Respondent, once contacted, would attempt to sell or transfer the Domain Name.
The Respondent, in the person of the administrative and technical contact for the Domain Name, Mr. Steve Bohn, contends that:
- the Respondent, namely Harrod's Designs Unlimited, Inc., is a company incorporated in the State of Ohio by Brenda Harrod, of which Mr. Bohn is Vice President and owns 49%;
- the Respondent has a right and legitimate interest in the Domain Name since the company's name comes from Brenda L. Harrod, who has been using it for over 20 years in connection with her business activity of hair styling services and married Mr. Steve Bohn in 1994;
- the Respondent is commonly known by the Domain Name, since the salon has been operated by Brenda Harrod for about 10 years;
- before deciding to supplement its advertising by the Domain Name in 2002, the Respondent relied primarily on the Yellow Pages and on word-of-mouth advertising by its customers to attract business;
- the Respondent did not register or use the Domain Name in bad faith to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trademark, but registration and use were both made to advertise the services provided by the Respondent's hair styling salon;
- the Complainant has engaged in a reverse domain name hijacking. In this connection the Respondent refers to Harrods Limited v. Steve Bohn, WIPO Case No. D2003-0736 (in which Brenda Harrod's sister, Sharon L. Harrod, registered the domain name <harrodsjewelery.com>, of which Harrods Limited obtained the transfer merely due to the fact that the respondent renounced filing a response) and stresses that the Complainant avoided mentioning the exchange of correspondence between its solicitors and Mr. Bohn (Attachment E to the Response).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to the Complainant's trademark or service mark; and
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
In the Panel's view it is beyond dispute that the Complainant has trademark rights in the HARRODS name and that the Domain Name is confusingly similar to the Complainant's trademark. The Domain Name incorporates the Complainant's trademark HARRODS which must be regarded as a strong and distinctive mark in respect of various classes of luxury goods and services.
The mere addition of the descriptive and generic word "salon" - which can likely be associated with the Complainant's activity - cannot be considered as sufficient to avoid confusion between the Domain Name and the Complainant's trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219).
In the light of the above and of the fact that the addition of the gTLD ".com" has no legal significance when comparing the Domain Name and the Complainant's trademark, the Panel finds that this element has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) sets out in particular but without limitation three circumstances which if proved by respondent, shall be evidence of the respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the respondent, the respondent's use of, or demonstrable preparation 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
It has been consistently and repeatedly established by WIPO panelists that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of proof on this factor shifts to Respondent to rebut the showing" (see among others, Ditting Maschinen AG v. I.C.T. Company, WIPO Case No. D2003-0170; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784).
In the case at hand, the Panel is persuaded by the Respondent's submissions on the issue. In the Panel's view this is not a case where an opportunistic registrant adopts a famous name to legitimate an otherwise questionable registration.
In fact, the Respondent has shown that HDU (Harrod's Design Unlimited, Inc.) is a company incorporated in the State of Ohio in 1994, and owes its name to its incorporator and owner, Ms. HARROD. Ms. Harrod had been operating for about ten years a hair styling business before registering the Domain Name. The choice of the Domain Name can be therefore considered a natural selection given that her surname is Harrod and that she is owner of a Hair and Nail Salon (G.A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537; Supreme Chocolatier, L.L.C. v. Debra Bauer, WIPO Case No. D2001-0882).
In addition, as shown by Attachment E to the Complaint, the Respondent's web page clearly states the company's details (full name, location and business activity) as well as the name of its owner Ms. Harrod. From the evidence submitted, it is clear that the Domain Name is used to promote Ms. Harrod's business (Infovista S.A. v. Infovista Technology LLC/Samir Rahman, WIPO Case No. D2003-0913; Nishan Systems, Inc. v. Nishan Ltd., WIPO Case No. D2003-0204).
The Panel has considered whether it could be argued that the Respondent's knowledge of the HARRODS trademark (which is nearly indisputable considering the worldwide notoriety of such trademark) necessarily implied the lack of a bona fide offering of goods and services. Nevertheless, as stated in Rapido TV Limited v. Jan Duffy-King, WIPO Case No. D2000-0449, "The Respondent has provided cogent and corroborated reasons for his adoption of the domain name and of his continued use in the bona fide conduct of his business. The Policy does not aim to adjudicate between genuine conflicting interests. The Policy modifies the Justinian principle of `qui prior est tempore, potior est iure' - `first in time first in right' - only where there is clear and unjustifiable misappropriation of the Complainant's trademark."
The Panel believes that the Respondent's has a genuine interest in the Domain Name. The Domain Name is nothing but the reflection of the owner's surname which she has been using in a bona fide manner since 1994. Any dispute of this kind between bona fide users of the same name or mark does not fall within the scope of the UDRP procedure but is properly to be adjudicated by ordinary courts of law (Kölnmesse v. Globe Distillery, WIPO Case No. D2000-0491).
The Panel therefore finds that the Respondent has successfully proved to have rights and legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Although the Panel's findings in relation to paragraph 4(a)(ii) of the Policy are sufficient to deny the Complaint, the Panel nonetheless, in view of the Complainant's contentions of bad faith, deems it appropriate to spend a few lines on this third element. The Complainant argues that the Respondent in registering and using the Domain Name has intentionally attempted to attract for commercial gain Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product or service on the website or location.
The Panel agrees that the Domain Name could create an initial confusion in the sense that, given the popularity of the Complainant's mark, Internet users searching for the Complainant's web page could be diverted to the Respondent's website. Besides, the Respondent does not deny its knowledge of the Complainant's trademark at the time of registration. Nevertheless, in the light of the considerations set out in relation to paragraph 4(a)(ii) of the Policy and given that the Respondent took positive action to provide in its web page sufficient information to exclude any kind of sponsorship by or affiliation with the Complainant (i.e., the name of the corporation and of the owner, the location, etc.), the Panel finds that there is no evidence that the Respondent seeks to divert for commercial gain customers from the Complainant to its web page. On the other hand the Complainant has not supported its assertion that the Respondent's intention was to trade off the Complainant's reputation to attract Internet users to its website.
The Panel's conclusion is fortified by the following:
(i) the Panel cannot find that the Respondent acted in bad faith when registering the Domain Name;
(ii) the Respondent's assertion that it is commonly known by the Domain Name is supported by prima facie evidence as explained above;
(iii) the Respondent's e-mail dated May 16, 2002, shows that apparently the Respondent has not registered the Domain Name primarily for the purpose of selling or transferring it or to intentionally create a likehood of confusion with the Complainant's trademark;
(iv) the mere choice of the colours green and yellow, used by the Complainant in conjunction with the trademark HARRODS, cannot be deemed enough to prove bad faith;
(v) the graphic representation of the HARRODS trademark (see Attachment D to the Complaint) is not reproduced in the Respondent's web page, which is headed with the name "Harrod's Designs Unlimited";
(vi) the Respondent's web page has no advertisement banners or links to other websites which could confirm the Respondent's intent to profit from HARRODS goodwill.
Based on the above, the Panel cannot conclude that the Domain Name has been registered and is being used in bad faith.
D. Reverse Domain Name Hijacking
The Respondent has requested that the Panel consider whether the Complainant's action in this case has been brought in bad faith and thus constitutes reverse domain name hijacking under the Policy.
To prevail on such claim, the Respondent must show that the Complainant knew of either the Respondent's unassailable right or legitimate interest in the Domain Name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. In this connection the Respondent refers to the Harrods Limited v. Steve Bohn, WIPO Case No. D2003-0736 for the domain name <harrodsjewelery.com>, and stresses the fact that the Complainant omits to mention Ms. Gibbons' e-mail dated May 16, 2002.
In the Panel's view these arguments are not sufficient grounds to assert the Complainant's malicious intent to deprive the Respondent of its Domain Name.
For all the foregoing reasons, the Complaint is denied.
Dated: April 27, 2004