WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Mecca -Tech
Case No. D2010-0957
1. The Parties
The Complainant is Harrods Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Burges Salmon LLP, United Kingdom.
The Respondent is Mecca-Tech of Lansing, Michigan, United States of America.
2. The Domain Name and Registrar
The disputed domain name <harrodonline.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2010. On June 11, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, eNom, 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”).
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 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on July 19, 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.
On July 15, 2010, an individual named Matthew Flaminio sent the Center an email stating that he had received, on July 14, 2010, delivery by United Parcel Service of a written notice dated June 18, 2010 concerning the subject case which required a response by July 8, 2010. He stated that “since the date to respond has passed, this organization was not properly served with notice, nor provided a copy of the complaint, prior to stated date to respond. In light of this, please provide a copy of the complaint, via email, to my attention at your earliest convenience”. The Center responded to say, inter alia, that the Complaint and Notification of Commencement of Administrative Proceeding had been sent to the Respondent by email to all the available email addresses made known to the Center by the Complainant and by the Registrar of the disputed domain name. The records showed that the email message had been delivered to the Respondent with the exception of only one of the email addresses (i.e. firstname.lastname@example.org), in respect of which the Center received a bounced- back email.
The Panel issued a Procedural Panel Order on July 23, 2010 in which the Complainant was requested to furnish evidence in support of the claim made in the Complaint of its registration rights in the trade mark HARRODS ONLINE. The Center forwarded the Procedural Panel Order to the Complainant by email on July 23, 2010. Both the Respondent and Mr. Flaminio were copied in the email of July 23, 2010. The Complainant complied with the said Order. The Respondent was given up till July 30, 2010 to file a reply to the Complainant’s filing. The Center did not receive any reply or submission from the Respondent by the stipulated deadline. The Center, however, received an email on July 23, 2010 from Mr. Flaminio in which the latter claimed, inter alia, that “after review of the complain (sic.) forwarded to me via email, and investigation of the alleged facts, no person at the company formerly known as Mecca-Tech, has ever purchased nor registered the domain name in question… Corporate records of Mecca-Tech show that the organization had never been located at such an address”. He further went on to suggest that the Center contact a particular individual at another organization for further information relating to the matter at hand.
4. Factual Background
The Complainant and its predecessors have operated the Harrods Department Store in the Knightsbridge area of London, England since 1849. The Complainant claims to serve approximately 35,000 customers each business day. It also has other satellite stores at international airports such as London Gatwick, London Heathrow, Kuala Lumpur and Lisbon. A selection of Harrods products are also offered at various department stores in Japan, Singapore, and the cities of Taipei, Taichung and Tainan in Taiwan. The HARRODS name has also been used in relation to other services that include Harrods Estates, Harrods Bank and Harrods Aviation.
The Complainant has been active on the Internet for a number of years and has since February 14, 1999 operated its website at “www.harrods.com”. It has since September 26, 2003 also owned the domain name <harrodsonline.com>. This domain name links Internet users to the website at “www.harrods.com”.
The Complainant has used, registered or applied to register the trade mark HARRODS in many countries worldwide for a wide variety of goods and services. Its trademark portfolio includes many United States. registrations for the HARRODS trade mark for a wide range of goods and services in International Classes 3, 4, 8, 14, 16, 18, 21, 24, 25, 27, 28, 29, 30, 31, 33, 34, 35 and 36. The Complainant also has 46 trademark registrations worldwide for the mark HARRODS ONLINE in respect of services in International Class 35 which includes the provision of goods over the Internet.
The Complainant asserts that the HARRODS mark is famous, as a result of the quality of its goods and services, the tremendous volume of its customers, and the extensive advertisement and promotion of the mark. Reference was made to a number of previous panel decisions, namely Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024; Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544; Harrods Limited v. Harrod’s Closet, WIPO Case No. D2001-1027; Harrods Limited v. Dijitaldjs, WIPO Case No. D2001-1163; and Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, in support of the assertion that HARRODS is a well-known trade mark.
The disputed domain name was registered on December 30, 2009.
The Complainant’s representative sent formal letters before action to the Respondent on February 8, 2010, February 19, 2010, March 1, 2010 and April 29, 2010 but did not receive any response.
5. Parties’ Contentions
The Complainant contends, firstly, that the disputed domain name is confusingly similar to the trade marks in which it has rights. The only difference between the disputed domain name and the Complainant’s HARRODS trade mark is the omission of the letter “S” and the addition of the generic word “online”. The generic word does not add anything distinctive and is not enough to distinguish the disputed domain name from the Complainant’s trade mark which is incorporated in full in the disputed domain name.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. There is no information to suggest a right on the Respondent’s part to use the mark HARRODS, nor is the Respondent commonly known by the name HARRODS.
Thirdly, the Complainant asserts that the disputed domain name has been registered and is being used in bad faith. Initially, when the Complainant first became aware of the disputed domain name, it found that the domain name <harrodonline.com> resolved to an active website which appeared to offer services and advice relating to independent telemarketing. The disputed domain name now “times out” and resolves to a Google search results page. The disputed domain name suggests a false sense of origin or sponsorship and was 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.
The Complaint submits that the passive holding of a domain name that is identical or confusingly similar to a well-known and distinctive trade mark constitutes bad faith registration. Reference was made to the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Further, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website at “www.harrodonline.com” by creating a likelihood of confusion with the Complainant’s trade marks and established domain names as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on the website or location.
The Respondent could not have been unaware of the Complainant at the time of registration of the disputed domain name. In view of the fame of the Complainant’s HARRODS trade marks, the Respondent cannot make a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert customers or to tarnish the Complainant’s trade marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A preliminary point which the Panel would like to address relates to the communications received by the Center from Mr. Flaminio and the Respondent’s default. Paragraph 14 of the Rules states that:
“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
The Panel finds that the Respondent was given due notice in accordance with the Rules and the responsibility was discharged by the Center in accordance with paragraph 2 of the Rules. The said paragraph states that “it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent” and that “employing the following measures to do so, shall discharge this responsibility:
(i) sending Written Notice of the complaint to all postal-mail and facsimile addresses
(A) shown in the domain name’s registration data in Registrar’s Whois database for the registered domain-name holder, the technical contact, and the administrative contact; and
(B) supplied by Registrar to the Provider for the registration’s billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
B) postmaster@<the contested domain name>; and
(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under Paragraph 3(b)(v).”
Paragraph 2 of the Policy further reads:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; …”.
As stated by the panel in the case of The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, “… the Registrar’s Registration Agreement requires the Respondent to keep its contact information (including postal address) ‘up-to-date, complete and accurate’. A respondent cannot hide behind the provision to the Registrar of either an incorrect or out-of-date postal address”.
The Panel finds that the Respondent has been given a fair opportunity to reply to the Complaint. If it fails in its responsibility to provide accurate and complete contact details, the Center is under no obligation to find all possible means to track the Respondent down. In the circumstances and in order to ensure that the proceedings take place with due expedition (paragragh 10(c) of the Rules), the Panel will proceed to make a decision based on the Complaint since no Response was filed.
The Policy requires the Complainant to prove each of the following elements in order to obtain an order in its favour:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the trade mark HARRODS as well as in the trade mark HARRODS ONLINE. The disputed domain name <harrodonline.com> incorporates, in effect, the said trade marks in their entirety, albeit the letter “s” is omitted. The Panel agrees that the disputed domain name is confusingly similar to the Complainant’s trade marks. Even if one were to consider the issue only in relation to the Complainant’s primary trade mark, HARRODS, the finding of confusing similarity still holds as the additional word, “online” in the disputed domain name does not serve to distinguish the disputed domain name from the Complainant’s trade mark. The general consensus established by earlier panel decisions is that the addition of a generic or descriptive word (all the more so one which denotes precisely the nature of the goods and/or services provided), does not serve to remove the confusion with the complainant’s trade mark(s) but can in fact add to it.
Accordingly, the Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
With regard to paragraph 4(a)(ii) of the Policy, paragraph 4(c) provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name:
(i) before any notice to you 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 (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 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.”
Paragraph 15 of the Rules prescribes that “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Hence, notwithstanding the Respondent’s failure to file a Response, the Complainant is required to establish its case in compliance with the Policy. Nevertheless, in relation to the second requirement under paragraph 4(a) of the Policy, it has been recognized by previous panels that complainants are, generally speaking, limited in their capacity to prove the respondent’s lack or rights or legitimate interests to the domain name concerned. The Panel agrees with the general view that the complainant should establish at least a prima facie case that the respondent has no rights or legitimate interests, after which the burden shifts to the respondent to prove otherwise.
In this case, the Panel finds that the Complainant has succeeded in making out a prima facie case. There is no evidence to suggest that the Respondent has been commonly known by the name “Harrods” or “Harrod”, nor evidence to suggest that there is a bona fide offering of goods or services, or legitimate noncommercial or fair use of the disputed domain name. The HARRODS trade mark is also one which, in this Panel’s view, may be considered to be well-known. Bearing this in mind and the fact that the Complainant has, since September 2003, registered the domain name <harrodsonline.com>, it is highly unlikely that the Respondent independently and by pure coincidence chose to register the disputed domain name. The Respondent has failed to discharge its burden of proving that it has rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant’s trademark rights in HARRODS and HARRODS ONLINE. The Panel draws a negative inference from the Respondent’s failure to file a Response and apparent failure to provide accurate contact details when registering the disputed domain name. The Panel is prepared to infer that the Respondent registered the disputed domain name with the intention to trade on the goodwill and reputation of the Complainant and of the Complainant’s trade marks for the purposes of monetary gain. The registration of a domain name that is identical or confusingly similar to a well-known trade mark constitutes bad faith registration and use.
Accordingly, the Panel finds that the Complainant has satisfied the third requirement under paragraph 4(a) of 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 name <harrodonline.com> be transferred to the Complainant.
Dated: August 7, 2010