The Complainant is Harrods Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Burges Salmon LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Zhang Fashu of Xiamen, Fujian, the People's Republic of China.
The Disputed Domain Name <harrodstokyo.com> (the “Disputed Domain Name”) is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2010. On March 19, 2010, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the Disputed Domain Name. On the same day, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 22, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On March 23, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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 March 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 19, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on April 22, 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 and its predecessors have operated its flagship Harrods Department Store in the Knightsbridge area of London, England since 1849. The store serves about 35,000 customers every business day and is a regular tourist stop.
The store has been promoted worldwide for many years reinforced by extensive overseas export and mail order businesses. Satellite Harrods stores exist at major International Airports such as London Gatwick, London Heathrow, Kuala Lumpur and Lisbon. Products under the trade mark HARRODS are offered at popular departmental stores in Singapore, Taipei and Japan and on cruise liners.
The Complainant has actively operated an Internet website at “www.harrods.com” since February 14, 1999. The Complainant also actively operated the Internet website at “www.harrods.jp” since June 4, 2008 which redirects to “www.harrods.com”. Information about the Complainant and products under the trade mark HARRODS is found on these websites.
The trade mark HARRODS is registered in many countries around the world for a wide range of goods and services, including in United Kingdom, China and Japan. Among these is China registration No. 4018222 registered on April 15, 2004.
The trade mark HARRODS has been held to be well-known in earlier decisions under the Policy (e.g., 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; Harrods Limited v. Chris Brick, WIPO Case No. D2003-0876). The United Kingdom Court of Appeal has also identified HARRODS as a world famous trade mark (see British Telecommunications Plc v. One in a Million Limited [1998] 4 All ER 476).
The Disputed Domain Name was registered on October 19, 2009. The URL “www.harrodstokyo.com” does not resolve to any Internet website. The Complainant's solicitors sent a letter to the Respondent via the Respondent's postal address and administrative contact email address on November 25, 2009. The letter demanded that the Respondent voluntarily transfer the Disputed Domain Name to the Complainant. The Respondent did not reply. Follow-up letters on December 10, 2009 and March 4, 2010 also did not elicit any response from the Respondent.
The Complainant contents that:
a) The Disputed Domain Name is confusingly similar to the Complainant's HARRODS trade mark, the only difference being the addition of a generic non-distinctive word “tokyo" in the Disputed Domain Name;
b) The Respondent does not have rights and legitimate interests to the Disputed Domain Name and the Respondent is not commonly known by the name “Harrods”; and
c) The Respondent must have been aware of the Complainant and the Complainant's trade marks at the time of registration of the Disputed Domain Name. In view of the fame of the HARRODS trade mark, the Respondent cannot make a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent intentionally attempted to attract for commercial gain Internet users by creating a likely of confusion with the Complainant's trade marks as to source, sponsorship, affiliation or endorsement.
The Respondent did not reply to the Complainant's contentions.
Although the language of the registration agreement and accordingly the default language of the proceedings are Chinese, the circumstances may permit this Panel to determine otherwise having regard to fairness to the parties and procedural cost-efficiency and expedition (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
The Complainant submitted that English should be the language of the proceedings for the following reasons:
(1) The Disputed Domain Name is in English;
(2) The Respondent is infringing the Complainant's trade mark HARRODS which is in English;
(3) The word “tokyo” is a geographical reference in the English language;
(4) The WhoIs search shows that the Respondent's administrative contact email address is provided in English; and
(5) The WhoIs search shows that the Respondent's contact details are provided in English.
This Panel has to balance fairness to the parties against any procedural cost-efficiency and speed that may be gained by departing from the default language of the proceedings. None of the reasons cited by the Complainant are particularly helpful to address the question of whether English should be the language of the proceedings in preference to the default language. Nevertheless, this Panel is satisfied that the present facts justify the adoption of English as the language of the proceedings. This Panel is especially persuaded by the following circumstances:
(1) The Complaint is filed in English and the Complainant desires that English be the language of the proceedings;
(2) The Respondent has not filed any Response, which in all likelihood either means that the Respondent does not have any valid response, or is simply not interested to resist the Complaint;
(3) Significant disadvantage will be caused to the Complainant and the further progress of the proceedings in terms of additional cost and time without any apparent advantage being gained should the proceedings continue in the default language; and
(4) There are no special circumstances which suggest that the Complainant's request should be denied.
It must be borne in mind that the Policy was created, among other reasons, for the effective and expeditious disposition of domain name disputes. In a case where a respondent neither responds to a complaint nor objects to the complainant's request for departure from the default language of the proceedings, this Panel is of the view that the complainant's request should be respected unless special circumstances suggest otherwise.
Therefore, this Panel holds in accordance with paragraph 11(a) of the Rules that English be adopted as the language of the proceedings.
The three limbs of paragraph 4(a) of the Policy which the Complainant must show are:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
There is no question that the Complainant has rights in the HARRODS trade mark from the facts. A domain name incorporating a trade mark in its entirety with the addition of non-distinctive prefixes and suffixes is generally not distinguishable from the trade mark. In addition to the cases cited by the Complainant (eg, Harrods Limited v. Surrinder Gill, WIPO Case No. D2003-0243; Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456), this principle has been confirmed time and time again by countless past panel decisions. The suffix “tokyo” is a geographical indication and clearly serves a descriptive and/or generic function in relation to the word “harrods” in the Disputed Domain Name. It is not capable of distinguishing the Disputed Domain Name from the Complainant's trade mark HARRODS.
Therefore, the Disputed Domain Name is confusingly similar to the Complainant's trade mark. The first limb of paragraph 4(a) is established.
The Complainant alleges that the Respondent is not commonly known by the name “Harrods” and is unable to show evidence of rights to and legitimate interests in the Disputed Domain Name. There is no information to suggest otherwise. In particular, it is questionable that the Respondent would be able to use the name “Harrods” as a trade mark in those jurisdictions in which trade mark registration rights are held by the Complainant, including in China, the Respondent's home country, and Japan, the jurisdiction in which the descriptive suffix “tokyo” is most closely connected.
These proceedings and the order sought by the Complainant hereunder have potentially serious ramifications on the Respondent's use of the Disputed Domain Name. A reasonable respondent with rights or legitimate interests in a domain name would be expected to at least react to the same.
However, the Respondent has ignored and/or failed to show any interest in the proceedings. In the circumstances, the existence of rights and legitimate interests of the Respondent in respected of the Disputed Domain Name is highly suspect and this Panel holds that the second limb of paragraph 4(a) has been established prima facie. In the absence of contrary submission and/or information provided by the Respondent, the prima facie case remains.
The panel decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 establishes the principle that “passive holding” of a domain name that is confusingly similar to a well-known and distinctive trade mark may constitute bad faith under the third limb of paragraph 4(a) of the Policy. That decision has evolved into a line of cases distinguished by the following factual scenario (e.g., Compagnie Gervais Danone v. Yao Renfa, WIPO Case No. D2008-0582 and UPM-Kymmene Corporation v. yongxi zhang, WIPO Case No. D2009-0882):
1) The Disputed Domain Name incorporates a well-known mark;
2) The Respondent is an individual, rather than a business entity;
3) In view of the Complainant's trade mark rights, it is not possible to conceive of any plausible, legitimate, actual or contemplated use of the disputed domain name by the Respondent;
4) There is no apparent evidence of actual or contemplated use of the Disputed Domain Name: and
5) The Respondent failed to respond to the Complainant's cease and desist letter and the complaint under the Policy.
The trade mark HARRODS has been held by many previous panels to be a well-known mark. Based on the information submitted by the Complainant, this Panel does not see any reason to depart from these earlier decisions. This Panel acknowledges that the trade mark HARRODS is a well-known mark.
The Respondent is an individual, not a business entity. The Complainant's trade mark rights in China, Japan and other jurisdictions will in all likelihood prevent unauthorized use of the Dispute Domain Name as a trade mark within their scope of registration. Also, the Disputed Domain Name is passively held by the Respondent, that is, it does not appear to have been put into use, at least as a URL for an Internet website beginning with the ubiquitous sub-domain “www”.
Granted, the Complainant's allegations are rebuttable by a suitable Response supported by cogent contrary evidence. However, since no Response has been filed, this Panel can only draw an adverse inference that the Complainant's allegations are unchallenged and therefore made out. The present facts as established are consistent with the line of cases cited above regarding the principle of “passive holding” which leads this Panel to find bad faith use and registration of the Disputed Domain Name by the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <harrodstokyo.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: May 12, 2010