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 George Santiago of New York of United States of America.
The disputed domain name <harrods-ltd.com> is registered with GoDaddy.com, Inc.
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 GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name.
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”).
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 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2010.
The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on June 17, 2010.
The Center appointed James Bridgeman as the sole panelist in this matter on June 25, 2010.
This Panel finds that it was properly constituted. This 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 of Great Britain and Northern Ireland 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 for HARRODS including numerous United States 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. The Complainant relies on the following United States Trademarks in particular:
- United States Federal Trade Mark No. 3250706 registered on 12 June 2007 for the mark HARRODS for services in Class 35 which include the provision of goods and services over the Internet; and
- United States Federal Trade Mark No. 2966488 registered on 12 July 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, Mitsukoshi Department Store 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 and since March 9, 2000 has actively maintained an Internet presence at the “www.harrodsltd.com” address which in turn resolves to the website at the “www.harrods.com” address.
According to the Registrar's WhoIs information the disputed domain name was created on January 31, 2010.
The Respondent concealed his identity using Domains by Proxy Inc. and accordingly the WhoIs database only provides the contact information for Domains by Proxy Inc. On April 2, 2010, Domains by Proxy Inc. provided the Complainant's solicitors with the contact details of the Respondent.
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 submits that the disputed domain name is identical or confusingly similar to the HARRODS mark. The only difference between the Respondent's domain name and the Complainant's HARRODS trade mark is the addition of a hyphen and the generic word “ltd”. The domain name incorporates in full the Complainant's registered HARRODS trade mark.
Further, the Complainant's registered company name “Harrods Limited” is commonly abbreviated to “Harrods Ltd”.
In support of its submission the Complainant has cited the following decisions under the Policy:
- British Airways Plc. v. David Moor, WIPO Case No. D2006-1224 in relation to the domain name <britishairwayslimited.com>, where 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 1confusing similarity.”
- Sony Corporation v Domain Privacy Service and St. Kitts Registry, WIPO Case No. D2008-0795 in relation to the domain name <sonytelevision.com> where 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 the panel stated 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 where the panel stated that “[t]his panel's view, consistently expressed in its prior decisions, is that common nouns are rarely distinguishing elements. Where, as here 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 trade marks in question, in such situations confusing similarity was regarded as inevitable.” The panel inferred that the domain names “[w]ere chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any web site to which the domain names might resolve.”
- Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162 in which the panel stated that “[t]he 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 “[i]t 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 disputed domain name consists of the Complainant's trademark and a non-distinctive word and is therefore confusingly similar to the Complainant's trade marks.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name for the purposes 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. In Inter-IKEA Systems B.V. v Evezon Co. Ltd, WIPO Case No. D2000-0437 it was held that “In light of the fact and the facts that the 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”.
Furthermore the Complainant submits that the Respondent has not been commonly known by the name “Harrods”
The Complainant submits that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name <harrods-ltd.com> resolves to an active website with a mixture of English and Latin text that appears to be a form of template website powered by Google Sites. Sample pages of what appears when an Internet user enters the address “www.harrods-ltd.com” have been furnished as an annex to the Complaint.
The Complainant submits that the Respondent's 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.
On March 12, 2010, the Complainant's solicitors sent a formal letter before action marked for the attention of the Respondent to Domains by Proxy Inc., by post, by email to <harrods-ltd.com@domainsbyproxy.com> and by fax. The Complainant's solicitors received confirmation on the same day that the fax had failed.
The Complainant's solicitors did not receive a response to the letter before action from the Respondent.
The Complainant's solicitors wrote again to the Respondent on March 23, 2010 by post, email and fax. The fax delivered successfully on this occasion.
On March 24, 2010, Domains by Proxy wrote to the Complainant's solicitors by email to advise that they had forwarded the Complainant's solicitors' correspondence to the Respondent and requested that the Respondent contact the Complainant's solicitors by no later than April 2, 2010.
The Complainant's solicitors did not receive a response from the Respondent.
On April 2, 2010, Domains by Proxy wrote to the Complainant's solicitors by email, enclosing the contact details of the Respondent.
The Complainant's solicitors wrote to the Respondent on April 6, 2010 at the Respondent's postal address and the email address provided. The Complainant's solicitors did not receive a reply from the Respondent.
The Complainant's solicitors wrote again to the Respondent on April 15, 2010, and again on April 23, 2010. The Complainant's solicitors did not receive a reply from the Respondent.
A copy of the letter before action, email correspondence with Domains by Proxy Inc. and the Complainant's solicitors' subsequent letters 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 at “www.harrods-ltd.com” by creating a likelihood of confusion with the Complainant's trade marks 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 (paragraph 4(b)(iv) of the Policy).
Addressing the possibility that the disputed domain name incorporating the Harrods name could have been registered in ignorance of the Complainant's business, or by coincidence, the Complainant refers to the decision of the panel in Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723 where the panel stated that “It 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 mark. The panel in Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162 made a similar finding in relation to the domain name <harrodsgarments.com>. The Complainant further cites the decision in Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024 where 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 previous 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 submits 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 furthermore cites the decision in Harrods Limited v. Peter Pierre, supra where 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 United States Federal Trade Mark No. 3250706 registered on 12 June 2007 in Class 35 and United States Federal Trade Mark No. 2966488 registered on 12 July 2005 for the mark HARRODS for various goods and services in Classes 3, 14, 21, 24, 25, 27 and 31.
The word Harrods is the dominant element in the disputed domain name.
This Panel accepts the Complainant's argument that the additional elements being a hyphen and the letters “ltd” do not in any way distinguish the disputed domain name from the Complainant's HARRODS trademark.
The hypen in this context has no distinguishing character. Neither does the additional “ltd” element as it is likely to be taken as an abbreviation for the word “limited” implying a corporate entity viz. a limited liability company.
While this Panel accepts that HARRODS may well be a famous mark it is not possible to make such a finding on the basis of the evidence submitted as the Complainant has relied principally on findings of earlier panels established under the Policy and this Panel cannot make such a finding on that basis. For example, the Complainant has not furnished any evidence of its reputation in the United States where the Respondent appears to reside and yet asks this Panel to make a finding that the Respondent must have been aware of the Complainant and its reputation. Each complaint under the Policy must be taken on its own merits and founded on its own evidence.
This Panel is also satisfied that the disputed domain name is confusingly similar to the Complainant's HARRODS trade mark 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 strong argument that the Respondent has no rights or legitimate interests in the disputed 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 interests 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 his rights and legitimate interests in the disputed domain name prior to the commencement of this proceeding when he received the letter before action from the Complainant, 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 interests in the disputed 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.
On balance it is improbable that the Respondent has any rights or legitimate interests in the disputed domain name. In reaching this decision this Panel is of the view that the particular combination of the word “harrods” and the letters “ltd” taken together would imply that the domain name is the name of a corporate entity viz. a limited liability company. The homepage of the Respondent's website is headed “HOME (Harrods Limited)”. On the evidence the Respondent is not a corporate entity and his name bears no resemblance to the word “harrods”.
Furthermore the nonsense content of the Respondent's website is indicative of the fact that he is not using the site for any bona fide business purpose.
This Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has succeeded in 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 the disputed domain name because it incorporates the Complainant's HARRODS trademark as its dominant element.
This Panel furthermore finds that on the balance of probabilities the Complainant chose, devised, registered and is using the disputed domain name in order to take predatory advantage of the Complainant's goodwill and reputation on the Internet.
The disputed domain name <harrods-ltd.com> is very similar and almost identical to the Complainant's <harrodsltd.com> domain name. The Complainant has been actively using its <harrodsltd.com> domain name since March 9, 2000 whereas the disputed domain name <harrods-ltd.com> was not registered until January 31, 2010.
This Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in an act of typosquatting by the Respondent. Furthermore on the balance of probabilities this is not a situation where the registrant was unaware of the Complainant's business when the disputed domain name was registered and the Respondent established his website. In reaching this finding, this Panel notes that the Respondent's web site is headed “HOME (Harrods Limited)” and this would appear to be a false statement that the website is connected with some corporate entity either being the Complainant or having the same name as the Complainant. In either case it is misleading.
While there is no evidence that the Respondent is using the website for pay per click revenue, or for the offering of goods or services, there is equally no evidence that the disputed domain name was registered for non-commercial purposes. In the absence of any Response or explanation from the Respondent, this Panel finds on the balance of probabilities that the Respondent registered and 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 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.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and therefore 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 name <harrods-ltd.com> be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: July 9, 2010