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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Dennis Dorgan
Case No. D2001-1165
1. The Parties
Complainant is HARRODS LIMITED, a UK private company, with its principal place of business located in London, England ("Complainant"). Complainant's authorized representative is Hammond Suddards Edge, with offices in London, England.
Respondent is DENNIS DORGAN, with address in Marbella (Apt 4B, Bloque 1, Alzahara 1, Aloha, Malaga), Spain ("Respondent").
2. The Domain Name and Registrar
The domain name at issue is <harrodshomeshopping.com> ("the Domain Name"). The Registrar is Network Solutions Inc., of Herndon, Virgina VA20170, United States of America ("the Registrar").
3. Procedural History
The Complaint, in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Complaint"), was filed with the World Intellectual Property Organisation Arbitration and Mediation Center ("the WIPO Center") on September 24, 2001. The electronic version of the Complaint was received on October 2, 2001. An Acknowledgement of Receipt was sent by the WIPO Center to Complainant by e-mail on September 26, 2001.
On September 28, 2001, a Request for Registrar Verification was transmitted to the Registrar. On October 1, 2001, the Registrar confirmed by e-mail that the Domain Name is registered with it and that Respondent is the current registrant of the Domain Name.
On October 3, 2001, a Notification of Complaint and Commencement of Administrative Proceedings ("the Commencement Notification") was transmitted by email and by courier to Respondent, setting a deadline on October 23, 2001, by which Respondent could make a Response to the Complaint.
On October 23, 2001, Complainant’s authorized representative in earlier negotiations with Respondent's legal representative regarding transfer of the Domain Name, forwarded an e-mail of Respondent's legal representative of October 21, 2001, to the WIPO Center. Complainant’s representative asked the WIPO Center to ensure that a copy of this October 21, 2001 e-mail was passed on to the Administrative Panel. On October 25, 2001, the WIPO Center informed Complainant that the e-mail would be forwarded to the Administrative Panel once appointed.
The Panel will not consider the e-mail of October 23, 2001, and the attached October 21, 2001 e-mail, in this decision, as Paragraph 12 of the Rules only provides for additions to the Complaint (and the Response, if any), in the case that the Panel requests, in its sole discretion, further statements or documents from either of the parties. As the e-mail forms an addition to the Complaint and was not requested by the Panel, it will not be taken into account.
Respondent has not filed a Response, and on October 25, 2001, the WIPO Center sent a Notification of Respondent Default to Respondent.
On November 5, 2001, the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as the Sole Panelist.
4. Factual Background
Since about 1849 the Complainant and its predecessors have operated the Harrods department store in the Knightsbridge area of London, England.
Complainant has used, registered or applied to register the mark "HARRODS" ("the HARRODS Mark") in many countries around the world for a wide variety of goods and services.
Complainant owns and uses the domain name <harrods.com>, providing access to a website that offers Harrods merchandise for sale. Complainant also owns the domain name <harrodsonline.com>, but this domain name currently does not revolve to a website.
Respondent registered the Domain Name on January 26, 2000.
On November 29, 2000, Complainant's solicitor sent a letter to Respondent, requesting him to transfer the Domain Name to Complainant immediately, and provide Complainant with a number of undertakings. This letter was answered on December 21, 2000, by Respondent's legal representative, who stated that the Domain Name had been "parked" and was not in use, that it had been bought for a totally unrelated purpose which was still under development, but that Respondent nonetheless would agree to transfer the Domain Name upon reimbursement for technical, legal and internal costs. In a letter of January 8, 2001, Complainant's solicitors asked Respondent's legal representative to clarify these costs. Respondent's legal representative answered in a letter dated January 15, 2000, (probably: 2001) that these expenses came to GBP 12,500. Complainant's solicitors answered in a January 23, 2001, letter that Complainant was not prepared to pay such amount, and that it would only be willing to pay the initial registration costs of the domain name and any relevant transfer costs. After a reminder sent on February 26, 2001, Respondent's legal representative answered on March 1, 2001, that Respondent would be willing to transfer the domain name in consideration of GBP 3,850. On March 12, 2001, Complainant's solicitors answered that this amount was not acceptable, repeating the earlier offer to pay for the initial registration costs and any relevant transfer costs. By letter of March 18, 2001, Respondent's legal representative answered that in the event that Complainant would not agree on the amount of GBP 3,850, he had instructions to cease the negotiations.
The URLs corresponding to the Domain Name (http://harrodshomeshopping.com and http://www.harrodshomeshopping.com) currently give a multi-language "under construction" message, which is being generated by the Registrar.
5. Applicable Rules
Paragraph 4(a) of the Policy directs that Complainant, to obtain the requested remedy, must prove each of the following:
(i) that the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
6. Parties’ contentions
Complainant states that the HARRODS Mark is (world) famous, has acquired substantial goodwill and has come to be and is recognised as an indicia of origin exclusively identified with Complainant.
Complainant contends that Respondent has registered other "famous" domain names, including <debenhamshomeshopping.com>, <argoshomeshopping.com>, <dixonshomeshopping.com> and <tescohomeshopping.com>.
The grounds for the Complaint are:
1. Complainant states that the Domain Name is confusingly similar to the HARRODS Mark. The adding of the word "homeshopping" to the HARRODS Mark merely suggests that internet users using the website behind the Domain Name are able to purchase the Complainant's goods and services from home. It conveys the idea that the Complainant's famous department store is on-line and/or Complainant's goods and services are available on the Internet. The impression given to web users is that Respondent's Domain Name and the HARRODS Mark are one and the same, that is, that any associated goods or services are provided, sponsored, endorsed or affiliated with Complainant.
2. Complainant states that Respondent has no rights or legitimate interests in respect of the Domain Name, as he has not used or made any 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, nor could he, in view of the fame of Complainant's HARRODS Mark. Respondent is, according to Complainant, merely squatting on the subject domain name.
3. Complainant states that the Domain Name was registered and is being used in bad faith, as Respondent's registration of other domain names containing household brand names in the United Kingdom demonstrates a bad faith pattern of registering domain names featuring well known trademarks of others, which pattern compells the conclusion that Respondent is in the business of acquiring and selling domain names for profit.
According to Complainant, this conclusion also follows from the correspondence between Complainant's solicitors and Respondent's legal representative, in which Respondent offered to transfer the domain name to Complainant upon payment of GBP 12,500 to the Respondent, which sum was later reduced to GBP 3,850.
Complainant also states that when a registrant could not use a domain name without violating a trademark holder's right under applicable law, bad faith exists even if the registrant has done nothing but register the name. Furthermore, Complainant states that bad faith must also be found if it is unlikely that a registrant would have selected the domain name without knowing of the reputation of the mark used in the domain name.
As Respondent has not filed a Response, Complainant’s contentions have not been disputed.
7. Discussion and Findings
a. Trademark rights
Complainant has, in Annex C to the Complaint, provided sufficient evidence of its rights to the HARRODS Mark, amongst others in the United Kingdom (where Complainant has its principal place of business) and in Spain (where Respondent has his address).
The Panel considers the HARRODS Mark to be a well-known mark, both in the United Kingdom and Spain. Complainant and its predecessors have been using the HARRODS Mark for over 150 years, during which period the mark has been able to build a reputation (both inside and outside the United Kingdom). According to Complainant its Knightsbridge department store serves approximately 35,000 customers each business day, and the department store has become an attraction for tourists visiting London (it is mentioned in many travel guides on London, published in different countries and languages). Under the UDRP other Panels have found the HARRODS Mark to be a well-known or famous mark, see Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544 and Harrods Limited v. Harrod’s Closet, WIPO Case No. D2001-1027.
b. Identical or confusingly similar
The Domain Name consists of a combination of the element "harrods" (identical to the HARRODS Mark, in which the Complainant holds rights), the element "homeshopping" (a combination of the noun "home" and the verb "shopping", in the context of the internet suggesting a possibility to purchase goods on-line), and the element (suffix) ".com" (which indicates that the Domain Name is registered in the .com gTLD).
Of these three elements, the element "harrods" is the distinctive element. Given the HARRODS Mark's reputation, the Panel finds a likelihood of confusion between the HARRODS Mark and the Domain Name. The addition of the element "homeshopping" to the element "harrods" does not prevent this likelihood of confusion, as the element "homeshopping" is undistinctive and only suggests that the website or other on-line presence behind the domain name enables the public to purchase goods (from Complainant's department store) on-line.
The Panel, therefore, finds that the Domain Name is confusingly similar to Complainant’s HARRODS Mark.
c. Rights or legitimate interests
By not submitting a Response, Respondent has failed to invoke any circumstances which could demonstrate any right or legitimate interest in the Domain Name. Also, in the correspondence between Complainant's solicitors and Respondent's legal representative (attached to the Complaint as Annex G), no circumstances demonstrating any right or legitimate interest were brought forward by the latter. Respondent's legal representative stated that the Domain Name was bought "for a totally unrelated purpose which is still under development", but no further details were given on this purpose and no evidence was provided.
Furthermore, considering that Respondent currently (still) does not use the Domain Name (it does not revolve to a website or, as far as the Panel can deduce, some other on-line presence of Respondent), although he registered the Domain Name over twenty-one months ago, it cannot reasonably be considered that Respondent would be able to bring evidence of any of the circumstances described in Paragraph 4(c) of the Policy or other circumstances which could demonstrate any right or legitimate interest in the Domain Name.
The Panel therefore finds that Respondent has no right or legitimate interest in the Domain Name.
d. Bad faith
In the correspondence between Complainant's solicitors and Respondent's legal representative (attached to the Complaint as Annex G), Respondent's legal representative offered to sell the Domain Name at prices (GBP 12,500 and GBP 3,850) far exceeding domain name registration and transfer costs. This circumstance leads the Panel to conclude that Respondent has acquired the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the Domain Name. Paragraph 4(b)(i) of the Policy states that such a circumstance constitutes evidence of registration and use of a domain name in bad faith.
The Panel therefore concludes that Complainant has supplied sufficient evidence that Respondent's registration and use of the Domain Name have been made in bad faith.
On the basis of the foregoing the Panel decides that Complainant has provided the required evidence for the requested order transferring the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders the registration of the Domain Name <harrodshomeshopping.com> be transferred to Complainant.
Wolter Wefers Bettink
Dated: November 19, 2001