The Complainant is Harrods Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Burges Salmon LLP, United Kingdom (“U.K.”).
The Respondent is Nick Pirniakan of Newport Beach, California, United States of America and Amarillo, Texas, United States of America (“U.S.”).
The disputed domain names <harrodscarpet.com>, <harrodscarpets.com>, and <harrodsrugs.com> are registered with GoDaddy.com, Inc.
On May 18, 2010 the Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”).
On May 19, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names.
On May 21, 2010, GoDaddy.com, Inc. 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” 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”).
On May 21, 2010, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2010.
The Respondent did not submit any Response.
On June 11, 2010 the Center accordingly notified the Respondent's default.
On June 16, 2010 the Center appointed James Bridgeman as the sole panelist in this matter.
This 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 Complainant is the owner of the Harrods Department Store in Knightsbridge, London, U.K. and other stores at a number of international airports and other locations including London Gatwick, London Heathrow, Kuala Lumpur and Lisbon. The Complainant is also the owner of the HARRODS trademark which it uses in its retail business through its stores and over the Internet.
The Complainant is the owner of a large portfolio of trademark registrations throughout the world for HARRODS including numerous U.S. Trade Marks for various goods and services for the mark HARRODS in international classes 3, 4, 8, 14, 16, 21, 24, 25, 27, 28, 29, 30, 31, 33, 34, 35 and 36. In the present Complaint, the Complainant relies on the following U.S. Trademarks in particular:
- U.S. Federal Trade Mark No. 3250706 registered on June 12, 2007 for the mark HARRODS for services in Class 35 which include the provision of goods and services over the Internet; and
- U.S. Federal Trade Mark No. 2966488 registered on July 12, 2005 for the mark HARRODS for various goods and services in Classes 3, 14, 21, 24, 25, 27 and 31. Class 27 includes the provision of carpets, rugs, mats and matting; linoleum, artificial turf and vinyl floor coverings; non-textile wall hangings.
In addition The Takashimaya Department Store in Singapore, Shinkong Mitsukoshi Department Stores in Taipei, Taichung and Tainan, various Mitsukoshi Stores across Japan, and several cruise liners including the Queen Mary 2 and the Queen Victoria also offer a selection of Harrods products. The Claimant also uses the HARRODS name in relation to other services including Harrods Estates, Harrods Bank and Harrods Aviation.
The Complainant has had an established Internet presence for its business through its web site at “www.harrods.com” since February 14, 1999.
In the absence of a Response there is no information available about the Respondent except that found in the WhoIs and the information contained in the Complaint.
The disputed domain name <harrodscarpet.com> was registered on January 24, 2010.
The disputed domain name <harrodscarpets.com> was registered on January 31, 2010.
The disputed domain name <harrodsrugs.com> was registered on January 24, 2010.
The Complainant requests a decision that the disputed domain names be transferred to the Complainant.
The Complainant submits that over a period of 150 years the Complainant has established an international goodwill and reputation in the name HARRODS. Since about 1849, the Complainant and its predecessors have operated the world-famous Harrods Department Store in the Knightsbridge area of London, England. The Complainant submits that its international reputation has been reinforced by extensive overseas exports and by an international mail order business that extends worldwide and the goodwill and reputation established by its “satellite” stores and its Internet presence on its web site at “www.harrods.com” since February 14, 1999.
The Complainant submits that its flagship Harrods Department Store is unique and highly prestigious, providing over one million goods and 50 separate services. The store typically serves approximately 35,000 customers each business day.
The Complainant has actively operated its Internet web site at “www.harrods.com” since February 14, 1999. The Complainant's web site includes information on the Complainant's London store and the products available, together with information about the Complainant's history and the Harrods Group. Representative pages from the Complaintant's web site have been submitted as an annex to the Complaint.
The Complainant submits that as a result of the quality of the Complainant's goods and services, the tremendous 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 recognized as an indicium of origin exclusively identified with the Complainant.
The Complainant submits that confirmation of the reputation of the Complainant and the HARRODS name may be found from previous WIPO Decisions, such as Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024 which considered the “HARRODS Mark to be a well-known mark” with a reputation “both inside and outside the United Kingdom…”, Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544, Harrods Limited v. Harrod's Closet, WIPO Case No. D2001-1027 and Harrods Limited v. Dijitaldjs, WIPO Case No. D2001-1163.
The Complainant further cites Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162 in which the panel stated that “[t]here can be no doubt whatever but that the name Harrods is a famous name. A simple reading of the case index in any of the standard texts on passing off would reveal previous litigation where the Complainant or its predecessors have taken action to protect their mark ...” the panel also noted that “‘Brands, An International Review by Interbrand' published by Mercury Business Books in 1990, lists at page 125 famous brands in the retail, agency and credit industry. Of the eight businesses mentioned they include Harrods. In the separate entry for Harrods itself the following is stated: ‘It is perhaps curious to list as an international brand a retail store which, in effect, has only one main outlet - in Knightsbridge in Central London. Harrods, however, is recognised worldwide and has a powerful reputation for quality and excellence, all in a somewhat ‘British' context. Harrods is, potentially, one of the most licensable brands in the world because, being a luxury retail brand, it could be applied equally successfully to almost any up-market product'”. The panel then went on to say that “[r]eference should also be made to the useful discussion set out in British Telecommunications Plc v. One in a Million Limited [1998] 4 All ER 476 (CA). There would no doubt be a number of trademarks throughout the world which could be truly regarded as famous in every sense of the word. The [p]anel has no hesitation in finding that Harrods would be one of those.”
The Complainant submits that it has used, registered or applied to register the mark HARRODS in many countries around the world for a wide variety of goods and services. Such goods and consignees include for example: retail services, (the bringing together for the benefit of others, a variety of goods, enabling customers to view and purchase those goods in a department store); the provision of goods and services over the Internet; rugs and carpets; sporting articles; clothing, footwear and headgear; leather goods; sporting and cultural activities; cafeteria services; fashion consultation; photography; beauty and hairdressing salons; banking and brokerage services; gambling and entertainment; real estate management and insurance.
As a result, the Complainant is the owner of a worldwide trade mark portfolio and the Complainant's trademarks have become synonymous with a wide variety of high-quality luxury products and services. As well as numerous U.K. and Community trade mark registrations the Complainant's trade mark portfolio includes the following registered trademarks in the country of the Respondent's place of business and country of residence, the Unites States: U.S. Trade Mark No. 3250706, U.S. Trade Mark No. 2966488; and U.S. Trade Marks for various goods and services for the mark HARRODS in classes 4, 8,16, 28, 29, 30, 33, 34, 36 detailed above.
The Complainant submits that the disputed domain names <harrodscarpet.com>, <harrodscarpets.com> and <harrodsrugs.com> are confusingly similar to the Complainant's HARRODS trademark.
The Complainant submits that each of the disputed domain names incorporate in full the Complainant's registered HARRODS trademark. The only difference between the disputed domain names and the Complainant's HARRODS trademark is the addition of the word “carpet” in <harrodscarpet.com>; the addition of the word “carpets” in <harrodscarpets.com>; and the addition of the word “rugs” in <harrodsrugs.com>.
The Complainant refers to previous UDRP decisions on the question of whether a domain name is “identical or confusingly similar” to a trade/service mark in which the Complainant has rights, including Harrods Limited v. Chris Brick, WIPO Case No. D2003-0876 where the Panel found that “[t]he mark HARRODS is world-famous and instantly evokes the Harrods department store at Knightsbridge, London.”
The Complaint furthermore cites the decision of the panel in British Airways Plc. v. David Moor, WIPO Case No. D2006-1224 in relation to the domain name <britishairwayslimited.com>, it was held that “the [r]espondent has added the word ‘limited' to the [c]omplainant's trademark. The [p]anel finds that including a dictionary word to a disputed domain name consisting of a complainant's trademark in its entirety does nothing to alleviate the confusing similarity”.
The Complainant submits that according to the panel in Sony Corporation v. Domain Privacy Service and St. Kitts Registry, WIPO Case No. D2008-0795 “when a domain name incorporates a complainant's mark in its entirety, it is confusingly similar to that mark despite the addition of other words'”, and further that ‘“Television” is a common word which describes the type of goods and services the Complainant offers. It also describes the goods being promoted on the disputed domain name website. The addition of this word is not enough to distinguish the disputed domain name from the [c]omplainant's trade mark, and accordingly the [p]anel finds that the disputed domain name is confusingly similar to [complainant's trade mark].”
The Complainant further referred to Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219 where it was held that “the more unique and inherently distinctive the mark, the stronger it is, and the greater the likelihood that the public may confuse a similar mark…”
The Complainant specifically also refers to UDRP decisions that have considered the identity or similarity of domain names incorporating the HARRODS mark. In Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456 it was stated that “[t]his [p]anel's view, consistently expressed in its prior decisions, is that common nouns are rarely distinguishing elements. Where, as here [<harrodsdepartmentstores.com>], the common noun selected coincides with and in fact connotes if not denotes precisely the goods or services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable”. The panel went on to find that “[r]ather than removing or reducing the risk of confusing similarity from the domain names when compared with the trade marks in question, in such situations confusing similarity was regarded as inevitable”. The panel inferred that the domain names “were chosen by the [r]espondent to cause Internet users to believe that the [c]omplainant endorses or is associated with any web site to which the domain names might resolve.”
In Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162 the panel stated that because of “the linking between the Harrods department store name and trade marks any use of the name Harrods in conjunction with a descriptor 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.”
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. There is no information to suggest a legitimate right to use the name “Harrods” by the Respondent. In Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437 it was held that “[i]n light of the fact that [c]omplainant has not licensed or otherwise permitted the [r]espondent to use its trademark …” and that “the mark IKEA is not one that the [r]espondent would legitimately choose ... unless seeking to create an impression of an association with the [c]omplainant, this [a]dministrative [p]anel finds that the [r]espondent has no rights or legitimate interests in the domain name.”
Referring to paragraph 4(c)(ii) of the Policy the Complainant submits that the Respondent has not been commonly known by the name “Harrods”.
The Complainant submits that the disputed domain names have been registered and are being used in bad faith.
The disputed domain names <harrodscarpet.com>, <harrodscarpets.com> and <harrodsrugs.com> all resolve to an active web site which is titled “Rugs of Nations Featuring: ‘The Pirniakan Rug Collection'” and which advertises for sale rugs and rug accessories. While the Respondent's web site shows a “shopping cart”, as at the date of this Complaint, this function of the web site does not appear to be active. The Complainant has furnished this Panel with sample pages from the web site to which the disputed domain names resolve.
The Complainant argues that the Respondent's domain names accordingly suggest a false sense of origin or sponsorship and were undoubtedly chosen by the Respondent in an attempt to free-ride off the goodwill associated with the HARRODS marks, in which the Complainant enjoys exclusive rights.
On March 12, 2010, the Complainant's solicitors sent a formal letter before action regarding the disputed domain names <harrodscarpet.com> and <harrodsrugs.com>, marked for the attention of the Respondent at his postal address, and to the administrative contact email address. The Complainant's solicitors did not receive a response to the letter before action from the Respondent.
On March 23, 2010 the Complainant's solicitors wrote again to the Respondent at his postal address, and administrative contact email address. Again, no response was received from the Respondent.
On April 23, 2010 the Complainant's solicitors wrote again to the Respondent at his postal address and administrative contact email address confirming that they would be instigating this Complaint. Again, no response was received from the Respondent.
In preparing this Complaint, the Complainant's solicitors discovered that the Respondent is also the registered owner of the disputed domain name <harrodscarpets.com>.
On May 10, 2010 the Complainant's solicitors wrote to the Respondent regarding the disputed domain names <harrodscarpets.com>, <harrodscarpet.com> and <harrodsrugs.com> at his postal address and administrative contact email address. Again no response was received from the Respondent.
The Complainant has furnished this Panel with copies of the letter before action and the Complainant's solicitors' subsequent letters in an annex to the Complaint.
The Complainant submits that by using the disputed domain names <harrodscarpet.com>, <harrodscarpets.com> and <harrodsrugs.com> the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its domain names by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location as contemplated in paragraph 4(b)(iv) of the Policy.
Addressing the possibility that the disputed domain names incorporating the HARRODS name could have been registered in ignorance of the Complainant's business, or by coincidence, the Complainant refers this Panel to the decision in Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723 where the panel stated that “[i]t is also important to remind that ... ‘HARRODS' may be considered as a well-known trademark. Therefore, it is quite unlikely that a ‘coincidence' has been given in the present case. On the contrary, it seems that the [r]espondent was clearly aware of the existence of the Complainant's trademarks and did not register the disputed domain name for other purposes than to include the Complainant's trademarks in said domain name.”
The Complainant argues that the Respondent could not fail to be aware of the Complainant at the time of registration of the disputed domain names. This has also been held to be the case in connection with non-U.K. residents, by the Panel in Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544 who found it inconceivable that the domain names <harrodswatch.com> and <harrodsjewelry.com> could have been registered without the knowledge of the Complainant's trade marks. This was also found to be the case by the Panel in Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162 in relation to the domain name <harrodsgarments.com>. The Complainant contends that in Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024, the panel stated that “[g]iven the Harrods Mark's reputation, the Panel finds it unlikely that Respondent could commercially use the Domain Name without knowing of the reputation of that mark”.
The Complainant refers to paragraph 4(b) of the Policy which sets out a non-exclusive list of factors that evidence bad faith. Previous UDRP decisions have explicitly held that 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 a complainant's rights under the applicable law, it is accepted that bad faith exists even if the respondent has done nothing but register the domain name.
The Complainant submits that in view of the fame of the Complainant's HARRODS trade marks the Respondent cannot make a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert customers or to tarnish the Complainant's trademarks as contemplated by paragraph 4(c)(iii) of the Policy.
The Complainant refers to the decision in Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456 wherein the panel held that “[t]he word ‘harrods' is obviously 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 did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of each of the disputed domain names to obtain an order that a domain name should be cancelled or transferred:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
The Complainant has satisfied this Panel that it is the owner of the trademark HARRODS through its use of the trademark in relation to its retail businesses and its numerous registered trademarks including U.S. Federal Trade Mark No. 3250706 registered on June 12, 2007 in Class 35 and U.S. Federal Trade Mark No. 2966488 registered on July 12, 2005 for the mark HARRODS for various goods and services in Classes 3, 14, 21, 24, 25, 27 and 31.
Each of the disputed domain names <harrodscarpet.com>, <harrodscarpets.com>, and <harrodsrugs.com> consist of two elements viz. the word “harrods” and a descriptive element “carpet”, “carpets” and “rugs” respectively.
The word “harrods” is the dominant element in each case.
This Panel accepts the Complainant's argument that the addition of the descriptive elements, “carpet”, “carpets” and “rugs” respectively, do not in any way distinguish the disputed domain names from the HARRODS trademark. Because the Complainant has a substantial goodwill in the use of the trademark HARRODS in relation to retail sales of household goods and furnishing at its department stores and on the Internet, the addition of the descriptive elements “carpet”, “carpets” and “rugs” only serve to add to the likelihood of confusion among users of the Internet.
In the view of this Panel the Complainant has established that each of the disputed domain names are confusingly similar to the Complainant's HARRODS trademark.
The Complainant has therefore satisfied the first element of the test in paragraph 4(a) of the Policy.
It is well established under the Policy that once a complainant has made out a prima facie case that a respondent has no rights or legitimate interest in a domain name, the onus of proof under the second element of the test in paragraph 4(a) of the Policy shifts to the respondent.
This Panel finds that the Complainant has succeeded in making out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has tendered the findings of panellists in a number of previous decisions under the Policy as evidence of its own reputation. Relying strongly on these decisions the Complainant has argued that it is inconceivable that the Respondent would have any such rights. In the view of this Panel it is inappropriate for a complainant to rely solely on the findings of previous panels as evidence of fame or reputation. Each case must be taken on its own merits and the findings of previous panels are neither probative nor binding in this regard. If a complainant wishes to rely on the fame of its marks it should provide evidence of that fame and not merely rely on the findings of other panels.
That being said there is sufficient evidence before this Panel to support a finding that the Respondent, based in the U.S., had both constructive and actual knowledge of the Complainant's fame and reputation when he registered the disputed domain names.
The disputed domain names were registered on January 24, 2010 and January 31, 2010 and the Complainant's rights in its registered trademarks in the U.S. pre-date each of the disputed domain name registrations. The Complainant had an established presence on the Internet through its web site at the “www.harrods.com” address since February 14, 1999. It is unlikely that the Respondent would not have become aware of the Complainant's registration of the <harrods.com> domain name when he registered the disputed domain names.
In the absence of a Response or any explanation, the Respondent has failed to discharge the burden of proving that he has any rights or legitimate interest in any of the disputed domain names.
In reaching this decision this Panel is fortified by the fact that on the evidence the Respondent's web site has a “shopping cart” feature which was inactive as of the date of the Complaint.
This Panel finds therefore that the Complainant has succeeded in satisfying the second element of the test in paragraph 4(a) of the Policy.
On the evidence this Panel finds that on the balance of probabilities the Respondent chose, devised, registered and is using each of the disputed domain names because they each incorporate the Complainant's HARRODS trademark as their dominant element. This Panel furthermore finds that on the balance of probabilities the Complainant chose, devised, registered and is using each of the disputed domain names in order to take predatory advantage of the Complainant's goodwill and reputation on the Internet.
This Panel accepts the Complainant's submission that each of the disputed domain names have been used by the Respondent to associate the Respondent's web site with the Complainant and the goodwill built up over the years by the Complainant in the use of the HARRODS trademark in order to suggest a false sense of origin or sponsorship of the Respondent's web site.
On the evidence, and in the absence of any Response or explanation from the Respondent, this Panel finds on the balance of probabilities that by using each of the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's HARRODS mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of products or services purported to be offered by the Respondent on his web site.
This Panel finds therefore that the Complainant has also succeeded in satisfying the third and final element of the test in paragraph 4(a) and is entitled to succeed in its application.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <harrodscarpet.com>, <harrodscarpets.com> and <harrodsrugs.com> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: June 29, 2010