WIPO Domain Name Decision: D2006-1061

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harrods Limited v. Harrod Exclusive Realty Service

Case No. D2006-1061

1. The Parties

The Complainant is Harrods Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by Burges Salmon LLP of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Harrod Exclusive Realty Service, of Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <harrodsproperties.com> is registered with Go Daddy Software, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2006. On August 22, 2006 the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain name at issue. On August 22, 2006 Go Daddy Software, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 August 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2006. The Response was filed with the Center on September 7, 2006.

The Center appointed Mary Padbury as the sole panelist in this matter on October 3, 2006. The Panel finds that it was properly constituted. In accordance with Rules, paragraph 10(c) the Panel extended the due date for decision from October 17, 2006 to November 3, 2006. 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 is a UK private company limited by shares with its principal place of business located in London. Since about 1849, the Complainant and its predecessors have operated Harrods Department Store in the Knightsbridge area of London,United Kingdom of Great Britain and Northern Ireland. The store typically serves approximately 35,000 customers each business day and has become a “mandatory” stop for tourists visiting England. The Harrods Department Store has been promoted internationally for many years and its international reputation has been reinforced by extensive overseas exports and by an international mail order business that extends worldwide. The Complainant has satellite stores at major international airports such as Frankfurt, London Gatwick, London Heathrow, Kuala Lumpur, Lisbon and Vienna. Further, the Seibu Department Store in Hong Kong and various Mitsukoshi Stores across Japan also offer a selection of Harrods’ products. In conjunction with associated companies, the goodwill and reputation in the Harrods’ name has extended to product ranges that include Harrods Estates, Harrods Bank and Harrods Casino Online.

The Complainant has operated the Internet website “www.harrods.com” since February 14, 1999. Harrods operates a successful real estate business which is located at “www.harrods.com/estates” and which is also accessed by the URL “www.harrodsestates.com”. Harrods Estates specialize in prime residential properties in Central London and the Home Counties. The original Harrods Estates was established over 100 years ago.

The Complainant’s trademark portfolio includes UK Trademark No. 1305588 registered March 31, 1987, for the mark HARRODS for various services in class 36 including real estate agency services, Community Trademark No. 61697 registered April 1, 1996, for the mark HARRODS for a wide range of goods and services in classes 1 to 42 including class 36 for real estate services and US Trademark No. 1812374 registered December 21, 1993, for the mark HARRODS for services in class 36 including real estate agencies and real estate management.

The Respondent is Harrod Exclusive Realty Service. The domain name <harrodsproperties.com> was registered on May 26, 2006. Lisa Harrod of Harrod Exclusive Realty Service is listed by the registrar as administrative and technical contact. Annex E to the Complainant’s Complaint includes pages from the Respondent’s website “www.harrodrealestate.com”. The website is headed “Lisa Harrod Harrod Exclusive Realty (not affiliated with Harrods of London)” and offers a range of real estate services for Florida based properties.

5. Parties’ Contentions

A. Complainant

The Complainant contends that as a result of the quality of the Complainant’s goods and services, the tremendous volume of its customers and 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 and is recognized as an indicia of origin exclusively identified with the Complainant. The Complainant refers to a number of earlier decisions in which the mark HARRODS is accepted to be a well known mark. (Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024, Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, Harrods Limited v. Surrinder Gill, WIPO Case No. D2003-0243, Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456, Harrods Limited v. Chris Brick, WIPO Case No. D2003-0876, Harrods Limited v. Steve Bohn, WIPO Case No. D2003-0736, Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723, Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544.)

The Complainant contends that the domain name is identical or confusingly similar to the trademark in which the Complainant has rights. The only difference between the Respondent’s domain name and the Complainant’s HARRODS trademarks is the addition of the word “properties”. The HARRODS mark is said to instantly evoke the famous Knightsbridge department store and its related products and services, which include Harrods Estates, with the addition of the word “properties” merely suggesting that the web pages at “www.harrodsproperties.com” are connected to the Complainant. Further, the Complainant contends that as the domain name incorporating the word “HARRODS” diverts to “www.harrodrealestate.com” that the Respondent is clearly using the HARRODS name to divert business from the Complainant and that the commercial impression conveyed to Internet users by these web pages is that the Respondent’s services are sponsored, endorsed or affiliated by and with the Complainant. The Complainant asserts that the domain name was chosen by the Respondent in an effort to free-ride off the goodwill associated with the HARRODS marks in which the Complainant enjoys exclusive rights.

In particular, the Complainant contends that a user of the mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter. It also contends that the more unique and inherently distinctive the mark, the greater the likelihood that the public may confuse a similar mark.

The Complainant does not believe that the Respondent can demonstrate any circumstances that would evidence rights to, and legitimate interests in, the domain name. The Complainant states that the domain name <harrodsproperties.com> resolves to the URL “www.harrodrealestate.com” which offers real estate services in Florida. The page also contains a link to a newsletter apparently written by Lisa Harrod which is headed “Harrod Exclusive Realty (not affiliated with Harrods of London)”. The Complainant notes that if the name of the business operation is “Harrod Exclusive Realty” and the website itself resolves to the URL “www.harrodrealestate.com”, to which the Complainant has no objection, then there is no reason why the Respondent should continue to use the domain name in issue as it is neither her own name nor the name of her business. The Complainant asserts it has merely been used to divert Internet traffic. The Complainant also contends that the defence of using the Respondent’s own name would only apply to “harrod” and not “harrods”. Reference is made to an email dated June 28, 2006, from the Complainant’s solicitors suggesting that the Respondent register a domain name such as <harrodproperties.com>. The Complainant contends that the Respondent has not been commonly known by the name “Harrods”. Rather, the Complainant contends that the Respondent has been known as “Harrod Exclusive Realty Service” and the relevant legitimate use of a family name or surname would be for “Harrod” and not “Harrods”. Reference is made to the case of Harrods Limited v. Steve Bohn, WIPO Case No. D2003-0736 where the panel held “The Respondent has claimed that a Ms Sharon Harrod is the proprietor of the domain name …. There is no information on the website to suggest a legitimate right by the Respondent to use the name ‘Harrods’. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark.”

Reference is also made to the Complainant’s US lawyers, Dorsey & Whitney, having reached an agreement with the Respondent in 2006 whereby she agreed to stop all use of the name “HARRODS” and change the company name to “Harrod Exclusive Realty Services LLC” It is asserted, in spite of this, on May 26, 2006 the Respondent registered the domain name in issue. On June 28, 2006, the Complainant’s UK solicitors sent a further letter asking the Respondent to transfer the domain name to the Complainant as this use was in breach of the pre-existing agreement. This correspondence is Annex F to the Complaint. The Complainant notes the newsletter makes it clear that the Respondent is aware of “Harrods of London”. Accordingly, the Complainant asserts the Respondent must have been aware of the Complainant at the time of registration of the domain name. In view of the fame of the Complainant’s HARRODS trademarks, it is asserted that the Respondent cannot make a legitimate non-commercial or fair use of the domain names without intent for commercial gain.

Lastly, the Complainant submits the Respondent has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant who is the owner of the Harrods trademarks or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain name.

The Complainant asserts that where a respondent cannot use a domain name without violating a complainant’s rights under applicable law, it is accepted that bad faith exists even if a respondent has done nothing but register the domain name. Similarly, the Complainant contends that if its mark is distinctive, as is the case with the HARRODS mark, bad faith is found if it is unlikely that the Respondent would have selected the domain name without knowing of this reputation. For example, the Complainant refers to the decision in Harrods Limited v Peter Pierre, WIPO Case No. D2001-0456 where the panel held that “The 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”. Similarly, the Complainant contends that the choice of “Harrods” rather than “Harrod” suggests a deliberate choice was made by the Respondent.

B. Respondent

The Respondent’s Response consists of a short-email to the Center with the following:

“Tried to get <harrodproperties.com> and it was taken.

No apostrophes are allowed in web names so Harrods Properties was the only choice. The Complainant is negligent and incompetent with this oversight which is bad. Nevertheless, it cost me money to acquire this name. I am not in the charity business.

I have been harassed by this company by a barrage of emails and courier mail. Taking time out of my work day, losing income to address them. I refuse to be penalized because of their negligence, incompetence and oversight in acquiring domain names to protect their client.

My compensation loss is $15,000+.”

6. Discussion and Findings

The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and the Supplementary Rules. The Complainant has the onus of proving three elements:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the domain name <harrodsproperties.com> is confusingly similar to the trademark HARRODS. The domain name incorporates the Complainant’s trademark and the addition of the descriptive word “properties” does not preclude confusion.

Accordingly, the Panel finds the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Panel must decide whether the Respondent has any rights or legitimate interests in respect of the domain name. In doing so, regard may be had to circumstances which might demonstrate rights or legitimate interests to the domain name as follows:

(i) before notice to the Respondent of the dispute, the Respondent’s 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) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or

(iii) the Respondent, making a legitimate non-commercial 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.

In relation to paragraph(i) above, the domain name has been used in connection with a bona fide offering of goods or services. It is apparent from the material provided, however, that the registration of the domain name in issue post dates a dispute arising from the Respondents’ use of the Complainant’s name. Further, on balance, the Panel accepts the Complainant’s contention that there is a distinction between the name of a proprietor of the Respondent “Lisa Harrod” and use of a domain name featuring the plural “Harrods” which is a well-known trademark. Lastly, this is not a case involving a legitimate non-commercial 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. The domain name in question does divert to another website of the Respondent.

Therefore, the Panel finds that the Respondent has no legitimate rights or interests in the domain name.

C. Registered and Used in Bad Faith

The Panel is satisfied that the domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith:

(i) circumstances indicating that the respondent has registered 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 for valuable consideration in excess of the respondent’s 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 domain name in a corresponding domain name, provided 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 of service on your website or location.

There is no evidence of the conduct in paragraphs (ii) and (iii) above. In relation to paragraph (iv), it would appear that the domain name is being used to attract Internet users to a website which diverts to another website of the Respondent and that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the website or location of a product or service on the website or location. There is also some evidence that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or entering or otherwise transferring the domain name to the Complainant who is the owner of the trademark for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. The Response refers to a figure of “$15,000+”.

Therefore, the Panel finds that the domain name was registered and is being used in bad faith.

7. Decision

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 <harrodsproperties.com> be transferred to the Complainant.

Mary Padbury
Sole Panelist

Dated: November 6, 2006