WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Josh Crutchley
Case No. D2008-0653
1. The Parties
The Complainant is Harrods Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by DLA Piper UK LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Josh Crutchley, Shropshire, United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Names and Registrar
The disputed domain names <harrodss.com> and <harrod-uk.com> are registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2008. On April 29, 2008, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On April 30, 2008, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 May 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2008.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on June 11, 2008. 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 owns and operates the world-famous and prestigious Harrods Department Store in London, England together with an associated export and mail order business and satellite stores in other cities and at major International Airports. It also owns and operates the associated companies Harrods Estates, Harrods Bank and Harrods Casino Online.
The Complainant is the registered owner of a portfolio of worldwide trade marks including the following:
(a) 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.
(b) UK Trade Mark No. 1305593 registered on March 31,1987 for the mark HARRODS for services in Class 42 including for beauty salons and hairdressing services.
(c) 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.
(d) 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.
(e) 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).
The Complainant has been active on the Internet for some years and has operated the Internet website “www.harrods.com” since February 14, 1999.
The Respondent registered the disputed domain name <harrodss.com> on October 14, 2007 and the disputed domain name <harrod-uk.com> on December 11, 2007.
5. Parties’ Contentions
The Complainant alleges that the domain names <harrodss.com> and <harrod-uk.com> should no longer be registered with the Respondent, but that they should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain names are confusingly similar to the Complainant’s registered trademarks, that the Respondent has no rights or legitimate interests in the domain names and that the domain names have been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain names to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the register HARRODS trademarks to which reference has already been made. It then says that the domain names <harrodss.com> and <harrod-uk.com> are confusingly similar to the HARRODS mark as the spelling of the word in the former domain name is the same as the spelling of the same word in the trademark with the single addition of the letter ‘s’ and the spelling of the word in the latter domain name is the same with the addition of a hyphen and the geographic indicator ‘uk’.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain names because the facts show an obvious intention by the Respondent to benefit from the reputation of the well-known HARRODS mark, that the Respondent is not named “Harrods” or “Harrodss” and that it has not been authorized to use the HARRODS name or mark.
Furthermore, the domain name <harrodss.com> resolves to a website at “www.joshcrutchley.com”, which appears to be the Respondent’s own homepage containing information about the Respondent and the domain names held by him. The domain name <harrod-uk.com> resolves to a website at “www.harrodstore.com”, which offers for sale a number of products including jewellery, electronics and fitness products. These factors show that the Respondent has no rights or legitimate interests in either domain name.
Nor, it is argued, can the Respondent bring itself within any of the provisions of paragraph 4(c) of the Policy.
Finally, the Complainant contends that the domain names were registered and are being used in bad faith. In support of this proposition, the Complainant submits that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its websites or other on-line locations by creating a likelihood of an “initial interest confusion” with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or locations or of a product or service on the website or location in breach of paragraph 4(b)(iv) of the Policy. It is also submitted by the Complainant that the whole of the conduct of the Respondent constitutes bad faith both with respect to the registration and the use of the domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is 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.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past WIPO UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain names are 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 names; and
(iii) The domain names have been registered and are being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel accepts the evidence submitted by the Complainant that it owns the registered HARRODS trademarks to which reference has been made and therefore has rights in those marks.
The Panel also finds that the disputed domain names are confusingly similar to the HARRODS marks. The spelling of each domain name is virtually the same as that of the mark; all that has been done to create the domain name <harrodss.com> is to add a single letter ‘s’; all that has been done to create the domain name <harrod-uk.com> is to remove the single letter ‘s’ and to add a hyphen and the letters ‘uk’, presumably indicating the UK. In each case, the objective bystander faced with the domain names and the HARRODS trademarks would assume that the domain names were referring to the famous and prestigious store and in the latter case its specific location in London in the UK.
In any event, the Panel draws the inference that the misspellings in the present case were done deliberately to mislead Internet users who make a mistake in spelling the word “Harrods” or who believe that it is really spelt as it appears in the domain names.
It has also long been held that suffixes such as the gTLD suffix ‘.com’ cannot negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain names. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain names, the Complainant will have failed to discharge its onus and the Complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until May 28, 2008 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain names.
The prima facie case is based on the facts that:
(i) the HARRODS trademark is one of the most famous in the world;
(ii) it indicates one of the most famous emporiums in the world, and certainly in the UK where the Respondent is apparently domiciled;
(iii) the Respondent chose this prominent name for its domain names and made only minor spelling alterations and additions;
(iv) the Respondent is not named ‘Harrods’, ‘Harrodss’ or ‘Harrod’;
(v) the Respondent has not been authorized by the Complainant to use the HARRODS name or mark in a domain name or anywhere else; and
(vi) it is very difficult to find a legitimate reason for using altered versions of the HARRODS trademark in the disputed domain names as the Respondent has done.
The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain names.
The Panel finds that the Complainant has therefore made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain names were registered in bad faith and that they are being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Complainant relies on paragraphs 4(b)(iv) and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP decisions Panel decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the Respondent both registered and is using the domain names in bad faith. In particular, the facts bring the case squarely within the provisions of paragraph 4(b)(iv) of the Policy. That is so for the following reasons.
The evidence shows that the Respondent has registered as domain names the Complainant’s famous HARRODS trademarks with only minor alterations. This raises the preliminary assumption that the domain names have been registered for some illegitimate purpose. Of course it was always open to the Respondent to show that this was not so, but he has declined to make any attempt to give a plausible explanation for registering domain names incorporating such prominent trademarks.
Secondly, the Respondent has then used the domain names to provide links to two websites. The website to which the domain name <harrodss.com> resolves is clearly that of the Respondent himself and is apparently designed to show that he is the registrant of a long series of domain names. From the evidence adduced by the Complainant it is clear that these domain names are virtually all misspellings or variations of famous brands such as <verginstore.com> and <tescosexpress>. It must be left to the imagination of the viewer to conclude whether these domain names are for sale, despite the Respondent’s protestations on the websites to the contrary appearing on the website of the domain name < harrodss.com >.
Whatever his motivation, the fact that they are to be found on a website to which one of the domain names in the present case, itself based on an unauthorized misspelling of one of the most famous trademarks in the world resolves, enhances the notion that the Respondent is improperly taking well-known trademarks and using them for creating unauthorized domain names.
The second domain name , <harrod-uk.com> resolves to the website “www.harrodstore.com” which, on the evidence annexed to the Complaint, advertises jewellery, home gyms and fitness equipment and other products, some at least of which would certainly be categories of products that are available for sale at the Complainant’s Harrods store.
That website and the present Respondent himself were the subject of adverse comment by the learned panelist in Harrods Limited v. Josh Crutchley, WIPO Case No. D2007-1848. In that decision, after noting the Respondent’s interesting defence on that occasion that he had never heard of Harrods, the learned panelist observed:
“The Panel also considers that the current purported use of the Domain Name for a website offering fitness related goods or services is not genuine, but rather is a bad faith attempt to parry this Complaint, with the intention of selling the Domain Name later. Alternatively, if the Respondent genuinely intends to offer or promote goods and services through this website, the Respondent is seeking in bad faith to take advantage of traffic generated by confusion with the Complainant’s mark.”
The Panel as presently constituted finds that those observations are directly applicable to the facts in the present case.
That conclusion makes it clear that the facts of the present case bring it squarely within the provisions of Paragraph 4(b)(iv) of the Policy.
Moreover the whole modus operandi of the Respondent in registering in effect such a famous trademark without any apparent authority or legitimate purpose brings his conduct within the general notion of bad faith on which the Complainant also relies.
The Panel therefore finds that the Respondent has registered and used the two domain names in bad faith.
The Panel finds that the Complainant has thus made out the third of the three elements that it must establish under 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 <harrodss.com> and <harrod-uk.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: June 15, 2008