The Complainant is Harrods Limited of Knightsbridge, London, United Kingdom of Great Britain and Northern Ireland, represented by Burges Salmon LLP, United Kingdom.
The Respondent is Verduci Domenico of Reggio Calabria, Italy.
The disputed Domain Name <harrodsstore.mobi> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2009. On September 18, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2009, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 25, 2009. The Center verified that the Complaint together with the amendment to 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 September 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 19, 2009.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 23, 2009. 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 and its predecessors have operated the Harrods Department Store in London for more than 150 years. 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. The Complainant operates a large international mail-order business, as well as satellite stores at international airports serving London, Lisbon, and Kuala Lampur. Harrods products are sold as well on cruise ships and in department stores in Japan, Singapore, and Taiwan, Province of China. The Complainant has operated a website at “www.harrods.com” since 1999.
The Complainant claims use of the HARRODS mark since the mid-19th Century. The Complainant holds several registered HARRODS trademarks, including the following:
|
MARK |
COUNTRY |
REG. NO. |
REG. DATE |
|
HARRODS (graphic representation) |
United Kingdom |
1038719 |
November 21, 1974 |
|
HARRODS (graphic representation) |
European Union- Community Trade Mark |
62414 |
October 23, 1998 |
|
HARRODS |
United Kingdom |
2245927 |
September 19, 2000 |
|
HARRODS (graphic representation) |
United Kingdom |
2245928 |
September 19, 2000 |
|
HARRODS (standard character mark) |
United States |
3250706 |
June 12, 2007 |
The Community Trade Mark is registered in the United Kingdom, the Benelux countries, Denmark, Germany, and Spain.
The Domain Name was registered on December 14, 2008 in the name of the Registrar's domain privacy service. The Complainant's counsel twice sent a letter of complaint to the registrant's contact address of record and received an automated response from the Registrar's domain privacy service. The Registrar ultimately provided details concerning the Respondent, after the Complaint was filed in this proceeding. It appears from this information that the Respondent is an individual residing in Italy.
The Domain Name resolves to a page that has only a single line of text, in English: “harrodsstore.mobi – home page”. The Internet Archive Wayback Machine does not reveal any other website formerly associated with the Domain Name.
The Complainant argues that the Domain Name is confusingly similar to its HARRODS mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant submits that the Respondent must have been aware of the Complainant's well known and long established HARRODS mark and chose the Domain Name in bad faith, with the intention of misleading Internet users for commercial gain.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Under paragraph 15(a) of the Rules,
“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.”
The Complainant holds registered HARRODS trademarks, both in the form of standard-character marks and as graphic representations that are simply renderings of the name in a distinctive script.
The Domain Name includes the HARRODS mark in its entirety and adds the dictionary word “store”. This does not avoid confusing similarity with the mark, particularly since the word “store” would naturally be associated with a department store.
The Panel concludes that the Domain Name is confusingly similar to the Complainant's HARRODS mark for purposes of the first element of the Complaint.
The Complainant asserts, without contradiction, that the Complainant has not authorized the Respondent's use of any domain name that is confusingly similar to the Complainant's HARRODS mark.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:
“(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.”
There is no evidence in the record, or from a perusal of the website associated with the Domain Name, that the Respondent has been known by a name corresponding to the Domain Name or has relevant trademark rights. It does not appear that the Domain Name has been used in connection with a bona fide commercial offering or a legitimate noncommercial or fair use, nor has the Respondent come forward with evidence of preparations for legitimate commercial or noncommercial use.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing (as it has in this case). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Respondent has not done so, and the Panel therefore concludes that the Complainant has established the second element of the Complaint.
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainant cites this provision, but there is no evidence that the Respondent has yet made use of the Domain Name for commercial gain.
The examples of bad faith listed in paragraph 4(b) are not exclusive, however. UDRP panels have found bad faith in the “passive holding” of a domain name that is identical or confusingly similar to a well known and distinctive mark. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview of WIPO Panel Views on Selected UDRP Questions sec. 3.2.
As the Telstra panel expressed the point,
“the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.”
Given the “strong reputation” of the TELSTRA mark, the respondent's evasive conduct, and the respondent's failure to advance a legitimate reason for choosing the domain name, the Telstra panel concluded as follows:
“it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.”
The Panel in the current UDRP proceeding similarly finds it difficult to conceive of a legitimate use of the Domain Name by this Respondent. The HARRODS mark is internationally well-known and long-established, as other UDRP panels have recognized. See, e.g., The 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 Domain Name is confusingly similar to the HARRODS mark and incorporates the mark in its entirety. The Respondent, located in Italy, has linked the Domain Name to an English-language placeholder site that Internet users would likely view as a future HARRODS website configured for display on mobile devices. The Respondent has failed to respond to the Complainant's letters or to the UDRP Complaint, and the Respondent concealed his identity until the Registrar divulged it to the Center in connection with this proceeding.
The Panel finds that, more probably than not, the Respondent selected the Domain Name illegitimately for its trademark value and continues to hold it precisely because of its potential for commercial exploitation through misidentification with the Complainant.
The Panel concludes on this record that the Complainant has established the third element of the Complaint.
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 <harrodsstore.mobi> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: November 9, 2009