The Complainant is Harrods Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or “UK”), represented by Burges Salmon LLP, United Kingdom.
The Respondent is Rajpal Chowdhury, RSC of Delhi, India.
The disputed domain name <destinationharrods.com> is registered with Net 4 India Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2010.
On May 19, 2010, the Center transmitted by email to Net 4 India Limited a request for registrar verification in connection with the disputed domain name.
On May 21, and May 28, 2010, Net 4 India Limited 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 May 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2010. The Respondent did not submit any formal Response but sent an email on June 19, 2010 to the Center which stated
“Dear Sir
This is in reference to your letter dated May 28, 2010 which has been received by us. This is to inform you that we are into the holiday season and the Director's will return towards July end. However we would like to inform you that we have already informed the Complainant that they are under no commercial risk and the registered domain name <destinationharrods.com> will not be used. I therefore see no reason for the complainant to be worried about.
Best regards”.
The Center acknowledged receipt and also brought this email to the Complainant's attention. Accordingly, the Center notified the Respondent's default on June 18, 2010.
The Center appointed James Bridgeman as the sole panelist in this matter on June 28, 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.
The Complainant is the owner of the Harrods Department Store in Knightsbridge, London, United Kingdom and numerous other retail outlets in a number of jurisdictions throughout the world including the Internet.
The Complainant is the owner of a large portfolio of trademark registrations throughout the world. In particular the Complainant relies on the following Indian registration:
- Indian Trade Mark No. 1254457 registered on October 1, 2005 for the word mark HARRODS for services in class 35 which includes the provision of goods and services over the Internet;
- Indian Trade Mark No. 1106119 registered on January 4, 2006 for the word mark HARRODS for the provision of goods in class 18 which includes leather and imitations of leather and goods made of these materials and not included in other classes, such as animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips; harness and saddlery;
- Indian Trade Mark No. 1106118 registered on May 22, 2002 for the word mark HARRODS for goods in class 25 which includes clothing, footwear and headgear.
In addition to The Takashimaya Department Store in Singapore, Shinkong Mitsukoshi Department Stores in Taipei, Taichung and Tainan, various Mitsukoshi Stores across Japan, Mitsukoshi Department Store and several cruise liners including the Queen Mary 2 and the Queen Victoria also offer a selection of Harrods products. The Complainant 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 website at the domain name <harrods.com> since February 14, 1999. The Complainant has also owned the domain name <harrodstravel.com> since March 7, 2004 which also resolves to the Complainant's website “www.harrods.com”.
In the absence of a Response or any other communications from the Respondent, the only information available about the Respondent is that found in the Complaint and the registrar's WhoIs.
According to the registrar's WhoIs the disputed domain name was created on January 7, 2010.
The Complainant submits that it has rights in the HARRODS trademark, inter alia, through its above referenced trademark registrations and its long established use of the HARRODS mark in its HARRODS Department Store in Knightsbridge, London, United Kingdom and other stores at a number of international airports and other locations including London Gatwick, London Heathrow, Kuala Lumpur and Lisbon. The Complainant also uses the HARRODS trademark for sales through its website over the Internet. Several cruise liners including the Queen Mary 2 and the Queen Victoria offer a selection of the Complainant's products under the HARRODS mark.
The Complainant submits that the goodwill and reputation in the HARRODS name has also extended to services that include Harrods Estates, Harrods Bank and Harrods Aviation.
The Complainant submits that its flagship Harrods store in the Knightsbridge area of London is unique and highly prestigious, providing over one million goods and 50 separate services. The Complainant submits that its Knightsbridge store serves approximately 35,000 customers each business day and has become a “mandatory” stop for tourists visiting England. The Complainant claims that its HARRODS trademark is a famous mark and cites a number of decisions under the Policy on which it relies as evidence of its fame and reputation.
The Complainant also operates an in-store travel service called “Harrods by Appointment Beyond” which specialises in organising bespoke, luxury holidays for its customers.
The Complainant submits that it has actively operated its Internet website “www.harrods.com” since February 14, 1999. Representative pages of its website have been submitted as an annex to the Complaint. The website content includes information on the Complainant's London store and the products available, together with information about the Complainant's history and the Harrods Group. The Complainant has also owned the domain name <harrodstravel.com> since March 7, 2004 which also resolves to the Complainant's website at “www.harrods.com”.
The Complainant asserts that 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 mark, the Complainant has exclusively acquired substantial goodwill in the HARRODS mark. The Complainant submits that HARRODS has become a famous mark and has and has come to be recognized as an indicium of origin exclusively identified with the Complainant. The Complainant seeks to rely on a number of decisions of panels established under the policy to confirm the reputation of the Complainant and the HARRODS name viz. 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; Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162.
The Complainant submits that the disputed domain name <destinationharrods.com> is confusingly similar to the Complainant's HARRODS trade mark.
The Complainant submits that the disputed domain name incorporates in full the Complainant's registered HARRODS trade mark and the only difference between the disputed domain name and the Complainant's HARRODS trade mark is the addition of the generic word “destination”.
The Complainant cites the following decisions of panels established under the Policy in support of its argument:-
- Harrods Limited v. Chris Brick, WIPO Case No. D2003-0876 where the panel found that “The mark HARRODS is world-famous and instantly evokes the Harrods department store at Knightsbridge, London.”
- Harrods Limited v. Surrinder Gill, WIPO Case No. D2003-0243 where the panel stated that “it is absurd to suggest that a panellist having to decide whether ‘the harrods' is confusingly similar to ‘harrods' requires the assistance of some 19 prior WIPO decisions”. In light of this, the Complainant has cited only those prior UDRP panel decisions which give credence to the Complainant's assertions of confusing similarity.
- In this regard, the Panel is referred to previous WIPO 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.
- British Airways Plc. v. David Moor, WIPO Case No. D2006-1224 in relation to the domain name <britishairwayslimited.com>, it was held that “the Respondent has added the word “limited” to the Complainant's trademark. The Panel 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.”
- Sony Corporation v. Domain Privacy Service and St. Kitts Registry, WIPO Case No. D2008-0795 in relation to the domain name <sonytelevision.com> it was held that “the disputed domain name contains the Complainant's SONY trade mark in its entirety. According to Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 “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 Complainant's trade mark, and accordingly the Panel finds that the disputed domain name is confusingly similar to the trade mark SONY.”
- 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.”
- Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456 in which the panel stated that “This Panel'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 “rather than removing or reducing the risk of confusing similarity from the domain names when compared with the trademarks in question, in such situations confusing similarity was regarded as inevitable.” The panel inferred that the domain names “were chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any website to which the domain names might resolve.”
- Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162 the panel stated that “the linking between the Harrods department store name and trade marks, 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.”
- Harrods Limited v. Simon Harkin Travel, WIPO Case No. D2004-0546, in which the panel stated that “…it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods” which is the quintessential and distinctive part of the Domain Name.”
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name and argues that it does not believe that the Respondent can 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.
The Complainant submits that there is no information to suggest a legitimate right to use the name “Harrods” by the Respondent. The Complainant cites the decision of the panel in Inter-IKEA Systems B.V. v. Eveson Co. Ltd, WIPO Case No. D2000-0437 where it was held that “[i]n light of the fact that Complainant has not licensed or otherwise permitted the Respondent to use its trademark and that the mark IKEA is not one that the Respondent would legitimately choose … unless seeking to create an impression of an association with the Complainant, this Panel finds that the Respondent has no rights or legitimate interests in the domain name.”
The Complainant refers this Panel to correspondence between the Complainant and the Respondent, copies of which are submitted as an annex to the Complaint which the Complainant submits shows that the Respondent has not provided the Complainant with information demonstrating a legitimate interest in the domain name at any stage during exchanges of correspondence between the parties.
The Complainant adds that the Respondent has not been commonly known by the name “Harrods” (paragraph 4(c)(ii) of the Policy).
The Complainant submits that the disputed domain name has been registered and is being used in bad faith.
The Complainant submits that the domain name <destinationharrods.com> resolves to a Net 4 Domains holding page. A sample page of what appears when an Internet user enters the domain name <destinationharrods.com> has been furnished as an annex to the Complaint.
The Complainant argues that although the Respondent's webpage is currently blank, the commercial impression conveyed to Internet users by this webpage is that any goods or services that the Respondent intends to supply through the webpage would be sponsored, endorsed or affiliated with the Complainant. Accordingly, the Respondent's use of 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 Complainant submits that the “passive holding” of the domain name that is identical or confusingly similar to its well known and distinctive marks constitutes a bad faith registration and cites the decision of the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in support of this argument.
The Complainant states that on 8 February 2010, the Complainant's solicitors sent a formal letter before action marked for the attention of the Respondent to the Respondent's postal address and by email. On the same date, a representative of the Respondent responded by email (from the Respondent's email address) to the letter before action. Since this time the Complainant's solicitors have been corresponding with the representative of the Respondent in order to seek to resolve the domain name dispute. However, these discussions have been unsuccessful. On April 23, 2010, the Complainant's solicitors put the Respondent on notice that it would be instigating this Complaint. A copy of the letter before action and the subsequent correspondence between the Respondent and the Complainant's solicitors have been furnished as an annex to the Complaint.
The Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website established at the address of the disputed domain name at “www.destinationharrods.com” by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location (paragraph 4(b)(iv) of the Policy).
Addressing the possibility that the disputed domain name could have been registered in ignorance of the Complainant's business, or by coincidence, the Complainant refers this Panel to the decision of the panel in Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723 where it 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 Respondent 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 submits that the Respondent could not fail to be aware of the Complainant at the time of registration of the domain name. This has also been held to be the case in connection with non-UK 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>. 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 submits that paragraph 4(b) of the Policy sets out a non-exclusive list of factors that evidence bad faith. Previous UDRP panel 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 the 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 argues that in view of the fame of the Complainant's HARRODS trade 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 trade marks (paragraph 4(c)(iii) of the Policy). The Complainant cites the decision of the panel in Harrods Limited v. Peter Pierre WIPO Case No. D2001-0456 which 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.”
In conclusion the Complainant submits that the Respondent has registered the disputed domain name in bad faith. The Complainant also considers that the Respondent has no rights or legitimate interests in the domain name, which is confusingly similar to trade marks in which the Complainant has rights.
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 the disputed domain name 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 established that it has rights in the HARRODS trademark, inter alia, through its above referenced Indian trademark registrations and the goodwill established by the Complainant at common law by its use of the HARRODS mark.
This Panel finds that the disputed domain name is confusingly similar to the Complainant's HARRODS mark. The disputed domain name consists of the dominant element “harrods” and the weaker descriptive element being the word “destination”. While the “harrods” element comes after the “destination” element it is nonetheless the dominant element because of the descriptive nature of the word “destination”.
In the circumstances this Panel finds that the disputed domain name is confusingly similar to the trade mark HARRODS in which the Complainant has rights and the Complainant has therefore satisfied the first element of the test in paragraph 4(a) of the Policy.
While the Complainant has not put forward a particularly strong argument that the Respondent has no rights or legitimate interest in the domain name, this Panel finds that the Complainant has nonetheless succeeded in making out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
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.
Despite having been given the opportunity to provide evidence of its rights or interests in the disputed domain name prior to the commencement of this proceeding when the letter before action was received from the Complainant and acknowledged, and subsequently by filing a Response in this proceeding, there has been no evidence, explanation or Response filed by the Respondent to support any finding that the Respondent had any rights or legitimate interest in the domain name. The Respondent has not been given any permission or license by the Complainant to use its HARRODS trademark or to register the domain name and the domain name is essentially the Complainant's company name in abbreviated form.
In the exchange of correspondence between the Complainant's solicitors and the representative of the Respondent, the Respondent has made not claim to any rights or legitimate interest in the disputed domain name. Furthermore the disputed domain name was created on January 7, 2010 many years subsequent to the Complainant's Indian trademark registrations and the Complainant's establishment of its Internet presence through its website.
On balance therefore, it is improbable that the Respondent has any rights or legitimate interests in the domain name. In reaching this decision this Panel is fortified by the fact that the Respondent has not established any commercially active website and has been passively holding the domain name on a parked page.
This Panel finds therefore on the balance of probabilities the Respondent has no rights or legitimate interest in the disputed domain name and the Complainant has therefore succeeded in the second element of the test in paragraph 4(a) of the Policy also.
Given the distinctive nature of the HARRODS mark, the fact that the registrant chose to combine it with the word “destination” leads this Panel to find that on the balance of probabilities the Respondent was actually aware of the Complainant and its rights when the disputed domain name was chosen and registered.
It has long been accepted by panels established under the Policy since the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 cited by the Complainant that the passive holding of a disputed domain name allows a panel to infer that the domain name was registered and is being used in bad faith. In the present case the Respondent has chosen not to file a Response or give any explanation for its choice of the words “destination” and “harrods” in combination.
While it would appear that the Respondent has been engaged in the passive holding of the disputed domain name on the balance of probabilities the domain name was chosen and registered for commercial purposes. The domain name was created was created on January 7, 2010 and in correspondence with the Complainant, the Respondent's representative refers to “a project” that is “on hold”. There is no further information about the project but in the view of this Panel it is safe to conclude that it is a project of a commercial nature.
In the absence of any Response or explanation from the Respondent, this Panel finds on the balance of probabilities that the Respondent registered and, by the passive holding of the domain name in the circumstances, is using the disputed domain name in order to take predatory advantage of the Complainant's reputation and goodwill and to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's HARRODS mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. In reaching this decision this Panel is fortified by the fact that in the correspondence submitted as an annex to the Complaint, the Complainant sent a cease and desist letter to the Respondent on February 8, 2010. Receipt of the letter was acknowledged by a representative of the Complainant by email on the following day. On February 11, 2010 the representative of the Respondent promises that the matter would be brought up at the “next board meeting” at the end of March. On April 13, 2010, the Complainant requested the transfer again and the Respondent replied that the board meeting had been postponed. In the view of this Panel the position taken by the Respondent's representative in the exchange of correspondence was disingenuous and designed to delay and obstruct the Complainant.
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 domain <destinationharrods.com> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: July 15, 2010