WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Brad Shaw
Case No. D2004-0411
1. The Parties
The Complainant is Harrods Limited, Knightsbridge, London, United Kingdom, represented by DLA, United Kingdom.
The Respondent is Brad Shaw, Vancouver, British Columbia, Canada.
2. The Domain Name and Registrar
The disputed domain name <harrods-poker.com> (the “Domain Name”) is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2004. On June 4, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 4, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 June 10, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2004.
The Complainant sent a further submission to the Center on June 24, 2004.
The Respondent sent an email to the Center on June 28, 2004, but did not submit any formal response. Accordingly, the Center notified the Respondent’s default on July 8, 2004.
The Respondent sent further submissions to the Center on July 8 and 15, 2004. The Complainant sent a further submission on July 14, 2004.
The Center appointed Adam Taylor as the sole panelist in this matter on July 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.
4. Preliminary Issues
The Respondent emailed the Center on June 28, 2004, briefly summarizing its position in response to the Complaint. While this falls well short of the requirements for a Response in the Rules, the Panel is nonetheless prepared to treat this email as a Response given that the Respondent is unrepresented and that the email was sent before June 30, 2004, the due date for the Response.
Both parties have made a number of further submissions not provided for in the Rules.
While the Rules do say that the Panel may request further submissions (paragraph 12 of the Rules), they make no provision for a party to file an additional submission without leave of the Panel. The principles which the Panel should apply in exercising such discretion have been considered in many cases under the Policy and Rules. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447.
The principles are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The Panel exercises its discretion to admit the Complainant’s submission dated June 24, 2004, as this simply forwarded email communications between the parties which postdated the Complaint (subject to the without prejudice point below).
The Panel declines to admit the Respondent’s submissions of July 8 and 15, 2004, or the Complainant’s submission of July 14, 2004. The matters raised in all of those submissions could either have been addressed in the parties’ primary submissions or are irrelevant. In any case, even if they had been admitted, nothing in those submissions would have changed the Panel’s conclusion on the merits.
The Respondent’s email of June 4, 2004, one of those produced by the Complainant in its June 24, 2004 submission, was arguably written for the purpose of settlement. This raises the issue as to whether it is subject to the common law “without prejudice rule” i.e. that it is privileged and inadmissible in evidence if and insofar as it was written for the dominant purpose of attempting to reach a settlement of the dispute. The majority of UDRP decisions on the issue have come down against the application of privilege. For a comprehensive analysis of the cases and of the varying reasons given for admitting such material, see The Vanguard Group, Inc. v. Emilio Sa, WIPO Case No. D2001-1453. Accordingly, this Panel declines to apply the without prejudice rule and admits the June 24, 2004 email.
5. Factual Background
Since 1849, the Complainant and its predecessors have operated the famous Harrods department store in the Knightsbridge area of London, England. The store serves approximately 35,000 customers each business day.
The store has been promoted internationally for many years. Its international business includes overseas exports and a worldwide mail order business. The Complainant also has satellite stores at major international airports such as Frankfurt, London Gatwick, London Heathrow, Kuala Lumpur, Lisbon and Vienna.
In conjunction with associated companies, the HARRODS name has been extended to product ranges that include Harrods Estates, Harrods Bank and Harrods Casino Online.
The Complainant has actively operated the website “www.harrods.com” since February 14, 1999. The site includes information about the London store and the products available, the Complainant’s history and the Harrods Group, including Harrods Casino Online.
Harrods Casino Online enables internet users to gamble on their own personal computers, including games such as poker. The website at “www.harrods-casino.com” has been actively operated since November 28, 2000.
The Complainant has numerous registered trademarks worldwide including the following:
- UK Trademark No. 1266810 registered May 10, 1986, for the mark HARRODS for various goods in Class 16.
- UK Trademark No. 2245927 registered September 19, 2000, for the mark HARRODS for services in Class 35.
- Community Trademark No. 62414 registered 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 August 13, 1985, for the mark HARRODS for services in Class 42 including retail mail order services of consumer goods.
- US Trademark No. 2115836 registered November 25, 1997, for the mark HARRODS for goods in Class 25.
The Respondent registered the Domain Name on March 18, 2004.
The Domain Name had not resolved to any website by the date of the Complaint. Internet users entering the URL “www.harrods-poker.com” were informed that the DNS server was temporarily unavailable.
On April 4, 2004, the Respondent emailed the Complainant saying that to maintain a strong market presence and positive search engine results when “poker” was searched for, it would be in the Complainant’s interest to acquire and deploy the Domain Name. The Respondent offered to sell the Domain Name to the Complainant for US$5,000.
The Complainant responded with a solicitor’s cease and desist letter dated April 30, 2004.
On May 2, 2004, the Respondent emailed the Complainant’s solicitors saying that if the Complainant was not willing to purchase the Domain Name for fair market value, then he would be happy to promote their affiliate program through it.
In response to service of the Complaint, the Respondent emailed the Complainant’s solicitors on June 4, 2004, complaining that more money has been spent on legal fees than would have been required to resolve the manner amicably.
There then followed an exchange of emails, much of it bad-tempered and much of it irrelevant. The only points of potential significance to emerge are as follows:
In an email from Respondent to Complainant’s solicitors sent between June 4 and 7, 2004, (exact date not shown) the Respondent said that he registered the Domain Name to use for the Complainant’s affiliate program of which he was a member and that he had given the Complainant the opportunity to purchase the Domain Name for its own use as he was busy with other projects. The Respondent indicated that it would put up an affiliate landing page that evening.
In an email from Respondent to Complainant’s solicitors June 7, 2004, the Respondent said that he was using the Domain Name to promote the Complainant’s affiliate program.
In an email from Complainant to Complainant’s solicitors June 8, 2004, the Complainant said that there was no affiliate program for poker or otherwise.
In an email from Respondent to Complainant’s solicitors June 24, 2004, the Respondent said he registered the Domain Name because it was available and because the Complainant had an affiliate program which he joined. He built numerous casino and sportsbook portals and was always on the lookout for a quality product to promote. When he received notice of the Complaint, he attempted to release the Domain Name but could not because it was locked. An amicable agreement was possible for a fraction of what had been spent that far. Alternatively his friend “Joe Harrod” would benefit from use of the Domain Name to promote his poker portal. Or maybe he (the Respondent) would just use it to promote the Complainant’s casino.
6. Parties’ Contentions
Identical or Confusingly Similar
As a result of the quality of the Complainant’s goods and services, the 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 the Complainant.
Confirmation of the reputation of the Complainant and the HARRODS name may be found in previous UDRP decisions.
The Domain Name is confusingly similar to the Complainant’s trademarks.
The only difference between the Domain Name and the Complainant’s HARRODS trademarks is the addition of the word “-poker.” Since the HARRODS mark instantly evokes the famous Knightsbridge department store and its related products and services which include the Harrods Casino adding “-poker” merely suggests that the webpage at “www.harrods-poker.com” is connected to the Complainant.
Although when an internet user enters the URL “www.harrods-poker.com” they are informed that the DNS server is temporarily unavailable, the commercial impression is that the Respondent’s services are sponsored, endorsed or affiliated with the Complainant. The Domain Name was undoubtedly chosen by the Respondent to free-ride off the goodwill associated with the HARRODS marks, in which the Complainant enjoys exclusive rights.
Use of a company’s entire trademark with non-distinctive and descriptive matter creates confusion.
A domain name is identical or confusingly similar to a trademark when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name.
Previous UDRP decisions involving Harrods have found confusing similarity where the domain name consisted of HARRODS plus a description. Confusing similarity was inevitable where the description coincided with goods or services for which the HARRODS trademark was registered.
Any use of the name “Harrods” in conjunction with a description would suggest a false sense of origin or sponsorship for any associated goods or services.
Rights or Legitimate Interests
The Respondent cannot demonstrate any circumstances that would evidence rights to and legitimate interests in the domain name for the purpose of paragraph 4(c) of the Policy.
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 has been provided by the Respondent.
There were no rights or legitimate interests where, as here, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and the mark is not one that the Respondent would legitimately choose unless seeking to create an impression of an association with the Complainant.
The Respondent offered to sell the Domain Name to the Complainant. There cannot therefore have been a bona fide offering of goods or services. The Domain Name could not have been chosen for any reason other than its association with the Complainant’s trademarks, and primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the HARRODS trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name.
The Respondent must have been aware of the Complainant at the time of registration of the Domain Name.
In view of the fame of the Complainant’s HARRODS mark the Respondent cannot make a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert customers or to tarnish the Complainant’s trademark (paragraph 4(c)(iii) of the Policy).
The Respondent has not been commonly known by the name “Harrods” (paragraph 4(c)(ii) of the Policy). It is the name in which the Domain Name is registered, i.e. Brad Shaw by which the Respondent is commonly known.
Registered and Used in Bad Faith
The Respondent 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 HARRODS trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name. (paragraph 4(b)(i) of the Policy).
Bad faith is not limited to the factors set out in paragraph 4(b) of the Policy. Where a respondent cannot use a domain name without violating the complainant’s rights under the applicable law, bad faith exists even if the respondent has done nothing but register the domain name.
Similarly, if the complainant’s mark is distinctive, as is the case with 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.
The word HARRODS is a well-known mark used by the Complainant in its day-to-day business. Its use by someone with no connection with the Complainant suggests opportunistic bad faith.
The Respondent’s email of June 28, 2004, reads as follows. (As explained above, the Panel is treating this as the Response.)
“In the matter of harrods-poker.com, I have shown I have several viable alternative uses for the domain. The Complainant does not have exclusivity over the name ‘harrod.
I have made only ONE unsolicited contact to the Complainant to see if they might be interested in the domain. This was simply to see if they might have a use for a domain that fit their business, it was not an attempt to “extort” or “hold hostage” the Complainant. I have since been on the receiving end of a relentless barrage of harassment by email and conventional mail.
I am tired of being badgered by these people and ask that you find in favor of the Defendant in this case.”
7. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
A. Identical or Confusingly Similar
The Complainant has established extensive registered and common law rights in the trademark HARRODS which substantially pre-date the Respondent’s registration of the Domain Name.
The Domain Name consists of the word HARRODS plus a hyphen and the generic term “poker.” The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark. See, e.g., The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010.
See also Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, where the Panel said “the linking between the Harrods department store name and trademarks, any use of the name Harrods in conjunction with a description such as ‘garments’ would suggest a false sense of origin or sponsorship for any associated goods or services. The word adds nothing distinctive and the emphasis is on the name Harrods and it is that which attracts the attention.” This statement applies equally here.
Indeed many panels have held that confusing similarity is established simply when a domain name wholly incorporates a complainant’s trademark. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
It is well established that domain suffixes are disregarded for the purpose of this comparison.
The Domain Name is therefore confusingly similar to the Complainant’s trademark for the word HARRODS.
The Panel concludes that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the Domain Name by showing, among other circumstances, any of the following elements
(i) before any notice to it of the dispute, its use of, or demonstrable preparations 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) it (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark rights; or
(iii) it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
There is no evidence that the Domain Name has been used in connection with an offering of goods or services before the Respondent had notice of the dispute.
The Respondent did claim at one stage that it was using the Domain Name to promote the Complainant’s own affiliate program – see the emails above. Even assuming that the Domain Name was so used (which is far from certain as there is no such evidence and indeed the Complainant denies having an affiliate program), it is clear from the Respondent’s emails that the use would have occurred well after it had notice of this dispute. In any case, the use of a Domain Name which includes a well-known and distinctive trademark to attract traffic to, and profit from, the trademark owner’s own affiliate program could hardly constitute a bona fide offering for the purposes of paragraph 4(c)(i).
Nor is there any evidence that paragraphs 4(c)(ii)-(iii) apply.
The Respondent’s offer to sell the Domain Name to the Complainant is also, in the circumstances, indicative of a lack of rights or legitimate interests.
The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Respondent made an unsolicited offer to sell the Domain Name to the Complainant for US$ 5000 on April 4, 2004, only some two weeks after it registered the Domain on March 18, 2004. It is reasonable to infer that this amount was well in excess of the Respondent’s out-of-pocket expenses directly related to the Domain Name.
This is classic evidence of bad faith, indicating as it does that the Respondent has registered the Domain Name primarily for the purpose of selling the Domain Name registration to the Complainant who is the owner of the trademark for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Name –(paragraph 4(b)(i) of the Policy).
The Panel’s view that paragraph 4(b)(i) applies here is in no way affected by the Respondent’s claim that its offer was not an attempt to ‘extort’ or ‘hold hostage’“ the Complainant. Whether or not the Respondent’s behaviour can be categorized in that manner is irrelevant.
The Panel concludes that the Domain Name was registered and is being used in bad faith.
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, <harrods-poker.com>, be transferred to the Complainant.
Dated: July 29, 2004