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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Ronald Krupinski
Case No. D2002-0542
1. The Parties
The Complainant in this administrative proceeding is Harrods Limited, a United Kingdom private company limited by shares, with its principal place of business located in London, United Kingdom.
The Respondent in this administrative proceeding is Mr. Ronald Krupinski of Providence, RI, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <harrodsclubcasino.com>. The Registrar of the domain names is eNom Inc of Redmond, WA, United States of America.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules"), and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
The Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 11, 2002, by email and on July 15, 2002, by hardcopy. On July 17, 2002, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On July 22, 2002, the Center received the Complainant’s Supplemental filing. On August 7, 2002, Notification of Respondent Default was issued.
The Administrative Panel consisting of a single member was appointed on August 12, 2002, by WIPO.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
4. Factual Background
Complainant’s factual assertions
The following information is derived from the Complaint.
The Complainant has over 150 years of international goodwill and reputation in the name HARRODS. Since about 1849, the Complainant and its predecessors have operated the world-famous Harrods Department Store in the Knightsbridge area of London, England. The Complainant’s flagship Harrods store is unique and highly prestigious, providing over one million goods and 50 separate services. The store typically serves approximately 35,000 customers each business day and it 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 also has introduced satellite stores at major International Airports such as Frankfurt, Heathrow, Kuala Lumpur, Lisbon and Vienna. 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 products ranges that include Harrods Estates and Harrods Casino Online.
In terms of Internet presence, the Complainant has been active on the Internet for some years and in particular, has actively operated the Internet web site "www.harrods.com" since February 14, 1999. The site includes information on the Complainant's London store and the products available, together with information about the Complainant's history and the Harrods Group, including Harrods Casino Online.
Harrods Casino Online enables Internet users to enjoy the thrill of gambling on their own PC. It is the culmination of phase one of the Complainant's plans for the Harrods Resort and Casino Online, which will provide Internet users with a virtual world of shopping, entertainment and sports to complement the buzz of the Harrods Online Casino. Information on Harrods Casino Online may be obtained from "www.harrods.com" and "www.harrods-casino.com". The Internet web site "www.harrods-casino.com" has been operated actively since November 28, 2000.
As a result of the quality of the Complainant’s goods and services, the tremendous volume of its customers and the extensive advertisement and promotion of the HARRODS mark, the mark is famous and has acquired substantial goodwill belonging exclusively to the Complainant. It has come to be and is recognized as an indicia of origin exclusively identified with the Complainant.
Confirmation of the reputation of the Complainant and the HARRODS name may be found from previous WIPO Decisions, such as Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024 which considered the "HARRODS Mark to be a well-known mark" with a reputation "both inside and outside the United Kingdom." (See also Harrods Limited v. AB Kohler & Co.,August 26, 2002, WIPO Case No. D2001-0544; Harrods Limited v. Harrod’s Closet, WIPO Case No. D2001-1027; Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162).
The Complainant has used, registered or applied to register the mark HARRODS in many countries around the world for a wide variety of goods and services. Such goods and services include for example: games and playthings; gymnastics and sporting articles; clothing, footwear and headgear; travelling bags; parasols and walking sticks; whips, harness and saddlery; leather goods; entertainment; sporting and cultural activities; cafeteria services; fashion consultation; photography; beauty and hairdressing salons; banking and brokerage services; real estate management and insurance.
In addition, the Complainant has used, registered or applied to register the mark HARRODS CASINO for services in Class 41 including gambling services.
As a result, the Complainant is the owner of a worldwide trademark portfolio and the Complainant’s trademarks have become synonymous with a wide variety of high-quality luxury products and services. The Complainant's trademark portfolio includes the following registered trade marks:
UK Trade Mark No. 1266810 registered May 10, 1986, for the mark HARRODS for various goods in Class 16.
UK Trade Mark No. 2245927 registered September 19, 2000, for the mark HARRODS for services in Class 35 including the bringing together for the benefit of others, of a variety of goods through online media enabling customers to conveniently view and purchase those goods which would normally be available in a departmental store through the said online media or by means of telecommunications.
UK Trade Mark No. 2254242 registered November 28, 2000, for the mark HARRODS CASINO for gambling services in Class 41.
Community Trade Mark No. 62414 registered April 1, 1996, for the mark HARRODS for a wide variety of goods and services in Classes 1 to 42.
Community Trade Mark No. 2227965 application May 21, 2001, for the mark HARRODS CASINO for gambling services in Class 41.
US Trade Mark No. 1354693 registered August 13, 1985, for the mark HARRODS for services in Class 42 including retail mail order services of consumer goods.
US Trade Mark No. 2115836 registered November 25, 1997, for the mark HARRODS for goods in Class 25 including footwear, headgear and clothing for children, men and women (including leather sportswear, jogging suits, swimsuits, wet suits and water proofs).
No indication of use of (or demonstrable preparations to use) the domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy has been provided by the Respondent. The Respondent has failed to respond to letters sent by the Complainant's solicitors.
The Respondent has not been commonly known by either of the names "Harrods" or "Harrods Club Casino". No web site can be found at the web site address to which the subject domain name resolves.
The Complainant filed supplemental information which consisted of a communication from the Respondent as follows:
"I am in receipt of your complaint regarding the Domain
Name " HarrodsClubCasino.com " .
I have spent much time and money in developing this
site, so unfortunately I will not just voluntarily
give the name away. I would consider any reasonable
cash offer on this name.
It is in both of our best interest to resolve this
matter quietly, quickly and without costly litigation."
Respondent’s factual assertions
The Respondent did not participate in this proceeding.
5. Parties’ Contentions
The Complainant relies on its long use and registration of the word "Harrods" and says that the subject domain name is confusingly similar to the Complainant’s marks. It refers to the notoriety of the name Harrods and to its casino operations and name.
Noting that there is no indication of any use by the Respondent of the subject domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy and asserting that the Respondent cannot make use of the subject domain name without trespassing on the Complainant’s rights, the Complainant asserts that the Respondent does not have a legitimate interest in the subject domain name. The subject domain name does not resolve to an active website and the Respondent is not known commonly by either Harrods or by the subject domain name.
Bad faith is said to be evidenced by the facts that the Respondent is simply sitting on the subject domain and cannot use it without violating rights of the Complainant. Reliance also is placed on the notoriety of the Complainant’s name to support the contention that the Respondent must have known about the Complainant’s rights when he registered the subject domain name. In this context, the Complainant relies on the passive use principle.
The Complainant also points to the recent correspondence from the Respondent which suggests a willingness to sell the subject domain name to the Complainant for an undisclosed amount.
The Respondent did not participate in this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired 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 of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s 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 the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant relies on a number of previous domain name dispute decisions including those relating to its interests. While such decisions are neither controlling nor binding on this Administrative Panel, often reference to them can be of assistance.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights to the name Harrods in many contexts, including in association with the word "casino" and activities related to it. The subject domain name differs only by the addition of the word "club" and ".com". The addition of the latter is irrelevant.
The Complainant has done an excellent job of providing to the Administrative Panel useful information. Reference is made to a significant number of previous domain name dispute decisions which not only support the Complainant’s rights, but illustrate the extent to which holders of such rights often are obliged to take proceedings to uphold them.
Particularly, considering the notoriety of the name Harrods and its participation in the gaming world, the addition of the word "club" in association with casino, would cause users to consider that the subject domain name is related to the Complainant.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondents Legitimate Interest
A respondent is not required to participate in a domain name dispute, but its failure to do makes the respondent vulnerable to inferences that flow from the information provided by a complainant. In addition, assertions of fact, which are not obviously unreasonable, will be taken as true.
In this case, again considering the notoriety of the Complainant’s name and taking into account the lack of any information pointing to a legitimate interest by the Respondent in the subject domain name, there is an inference that tells against the Respondent. In addition, he appears not to be known by the subject domain name and is not making any use of it. He also appears to be quite willing to relinquish the subject domain name for a price.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
Passive use is a well recognize indicator of bad faith in the context of domain name disputes, but it must be used with caution. With no response from a respondent, particularly in cases that involve entities that are extremely well known, an inference of bad faith is appropriate.
The recent communication from the Respondent indicating a willingness to sell the subject domain name for an undisclosed amount also supports the inference.
Although a finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of another does not lead automatically to a conclusion of bad faith, the facts that support the finding are relevant to the bad faith inquiry. In this case they are not rebutted. Registration of a domain name which is closely allied to a notorious mark, with no legitimate interest in it, supports an inference of bad faith.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asked that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: August 21, 2002