Complainant is Harrods Limited of Knightsbridge, London, United Kingdom of Great Britain and Northern Ireland, represented by Burges Salmon LLP, United Kingdom.
Respondent is Signographics of Hallandale, Florida, United States of America.
The disputed domain names <harrodshomes.com> and <harrodslumber.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2009. On December 3, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 7, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on December 9, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 29, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on January 8, 2010. 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.
Complainant's HARRODS trademark is famous. See, e.g., Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162.
Complainant holds several trademark registrations for the HARRODS mark in the United Kingdom and in Europe as well as United States Trademark Registration No. 1354693 registered August 13, 1985 for services in Class 42, including retail mail order services of consumer goods, and United States Trademark Registration No. 1812374 registered December 21, 1993 for services in Class 36, including banking, real estate management, insurance underwriting, and providing facilities for exhibitions and restaurants.
The disputed domain names were both registered on July 29, 2009 and presently route to parking pages with a search tool and sponsored links to what appear to be commercial third-party websites.
Complainant states that it has used the HARRODS mark since the mid-nineteenth Century.
Complainant also avers the following: that Complainant and its predecessors have operated the Harrods Department Store in London for more than 150 years; that the flagship store in the Knightsbridge district of London serves approximately 35,000 customers each business day and has long been a popular destination for tourists visiting England; that Complainant operates a large international mail-order business, as well as satellite stores at international airports serving London, Lisbon, and Kuala Lampur; that Harrods products are sold on cruise ships and in department stores in Japan, Singapore, and Taiwan, Province of China and that Complainant has operated a website at “www.harrods.com” since 1999.
Complainant contends that the disputed domain names are confusingly similar to the HARRODS trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in the disputed domain names, and that Respondent registered and uses the disputed domain names in bad faith.
Complainant also avers that it sent cease and desist letters to Respondent on August 25, 2009 and November 17, 2009, to which it never received any response.
On the basis of the above, Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant's contentions.
The Rules require the Panel to decide a 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. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Although the disputed domain names <harrodshomes.com> and <harrodslumber.com> are not identical to Complainant's trademarks, the Panel agrees with Complainant that Respondent's domain names are confusingly similar to Complainant's famous HARRODS trademark.
Panels disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The domain names in dispute adopt Complainant's famous trademark in its entirety, adding only the descriptive terms “homes” in one instance and “lumber” in the other. The Panel finds that Respondent's addition of these descriptive terms does not negate the confusion created by Respondent's complete inclusion of the HARRODS trademark in the disputed domain names. E.g., Sanofi-aventis, Sanofi-aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
The Panel finds therefore that the disputed domain names are confusingly similar to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain names.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
As the Complaint exhibits show, Respondent's websites display parking pages with a search tool and sponsored links to what appear to be third-party websites.1 By diverting traffic to third parties and their products, the Panel finds that Respondent is using Complainant's marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
In the absence of a Response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use Complainant's trademarks. The Panel also accepts Complainant's uncontested allegation that Respondent is not known by the disputed domain names.
The Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant's mark for Respondent's own commercial purposes. The Panel therefore finds that Respondent's use of the disputed domain names demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain names. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that the Complainant makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainants' prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain names.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Examining the circumstances in this case, the Panel infers that Respondent was undoubtedly aware of Complainant's famous mark, which Respondent deliberately adopted to create confusion and attract Internet users to its websites for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain names in bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163.
Moreover, Respondent refrained from responding to Complainant's cease and desist letters (attached to the Complaint); Respondent also refrained from responding to the Complaint. The Panel concludes therefore that, in addition to having registered the disputed domain names in bad faith, Respondent is also using the domain names in bad faith.
Consequently, the Panel concludes that the requirements of the third element of Policy Paragraph 4(a) are fulfilled.
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 <harrodshomes.com> and <harrodslumber.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Dated: January 18, 2010
1 The present content of the websites is consistent with Complainant's exhibits. The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions.