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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Harrods Limited v. Coupon Corporation Inc.

Case No. D2003-0105

 

1. The Parties

The Complainant is Harrods Limited, of United Kingdom of Great Britain and Northern Ireland, represented by DLA of London EC2V 7EE, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Coupon Corporation Inc., of San Antonio, Texas, United States of America.

 

2. The Domain Name and Registrar

The disputed Domain Name is <harrodscoupons.com>.

The Registrar is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia, United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on February 11, 2003, and in hardcopy on February 14, 2003. On February 12, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name at issue. On February 28, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 5, 2003. In accordance with the Rules, paragraph 5(a), the notification to the Respondent set a due date of March 25, 2003 for a Response to be considered in these proceedings. No Response was received. Accordingly, the Center issued a Notification of Respondent Default on March 28, 2003.

The Center appointed Keith Gymer as the sole panelist in this matter on April 9, 2003. 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.

 

4. Factual Background

The WHOIS records show that the Domain Name was first registered on October 23, 2001, and that the Registrant is "coupon corporation, inc." as indicated above.

The evidence in the Complaint shows that the Complainant’s then legal advisors first wrote to the Respondent to complain about the registration on April 18, 2002. This, and a subsequent letter of June 6, 2002, were evidently left unanswered by the Respondent.

The Complainant has operated a major department store under the HARRODS name in Knightsbridge, London since about 1849. The Complainant has associated businesses and other commercial operations as noted further below.

The Complainant's trade mark 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.

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.

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 waterproofs).

Trade Mark Register print-outs and copies of the Trade Mark Registration Certificates were attached to the Complaint.

 

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions and assertions in support of the Complaint:

The Complainant is the owner of 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 world wide. The Complainant has also introduced satellite stores at major International Airports such as Frankfurt, London Gatwick, London 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 product ranges that include Harrods Estates, Harrods Bank 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 website "www.harrods.com" since February 14, 1999. [Representative pages were annexed to the Complaint.] These pages include information on the Complainant's London store and the products available, together with information about the Complainant's history and the Harrods Group. The Harrods Group section provides information on the Harrods Corporate Service and a link to the Harrods Corporate Service website at "www.harrodscorporateservice.com". This website provides an exclusive range of gift choice for corporate clients, which includes hampers, sports goods, gadgets, gift vouchers, foods and wines.

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 HARRODS mark is famous, has acquired substantial goodwill belonging exclusively to the Complainant and has come to be and is recognized as an indicia of origin exclusively identified with the Complainant. No doubt as a direct consequence of such reputation the Complainant has been the victim of a number of domain name disputes; however it has always been successful in the retrieval of domain names which seek to take unfair advantage of its world famous brand.

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., WIPO Case No. D2001-0544 and Harrods Limited v Harrod's Closet, WIPO Case No. D2001-1027 in this regard).

The Panel is also referred to Harrods Limited v Vineet Singh, WIPO Case No. D2001-1162 in which the Panel stated that "There can be no doubt whatever but that the name Harrods is a famous name. A simple reading of the case index in any of the standard texts on passing off would reveal previous litigation where the Complainant or its predecessors have taken action to protect their mark …" the Panel also notes that 'Brands, An International Review by Interbrand' published by Mercury Business Books in 1990, lists at page 125 famous brands in the retail, agency and credit industry. Of the eight businesses mentioned they include Harrods. In the separate entry for Harrods itself the following is stated: 'It is perhaps curious to list as an international brand a retail store which, in effect, has only one main outlet - in Knightsbridge in Central London. Harrods, however, is recognized worldwide and has a powerful reputation for quality and excellence, all in a somewhat "British" context. Harrods is, potentially, one of the most licensable brands in the world because, being a luxury retail brand, it could be applied equally successfully to almost any up-market product'." The Panel then went on to say that "The nature of a famous or well known mark has been addressed on a number of occasions. Reference could be made to Mostert 'Famous and Well Known Marks' (Butterworths, 1997) the content of which is devoted to various famous marks throughout the world. Reference should also be made to the useful discussion set out in British Telecommunications Plc v One in a Million Limited [1998] 4 All ER 476 (CA). There would no doubt be a number of trademarks throughout the world, which could be truly regarded as famous in every sense of the word. The Panel has no hesitation in finding that Harrods would be one of those."

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.

As a result, the Complainant is the owner of a world wide trade mark portfolio and the Complainant's trade marks have become synonymous with a wide variety of high-quality luxury products and services. Details of a selection of the Complainant’s registered marks are given in Section 4 above.

The domain name is identical or confusingly similar to the trade marks in which the Complainant has rights

The domain name <harrodscoupons.com> is confusingly similar to the Complainant's trade marks.

The only difference between the Respondent's domain name and the Complainant's HARRODS trade marks is the addition of the word "coupons". Since the HARRODS mark instantly evokes the famous Knightsbridge department store and its related products and services, adding "coupons" merely suggests that the website at "www.harrodscoupons.com" is connected to the Complainant.

Thus the commercial impression conveyed to Internet users by the website at "www.harrodscoupons.com" is that the Respondent's services are sponsored, endorsed or affiliated with the Complainant. Accordingly, the Respondent's domain name suggests a false sense of origin or sponsorship for any associated products, goods or services and was undoubtedly chosen by the Respondent in an effort to free-ride off the goodwill associated with the HARRODS marks, in which the Complainant enjoys exclusive rights.

In this regard, the Panel is referred to previous WIPO Decisions on the question of whether a domain name is "identical or confusingly similar" to a trade/service mark in which the complainant has rights. In accordance with United States Olympic Committee v. MIC, WIPO Case No. D2000-0189 the addition of generic or descriptive terms or words designating the goods or services with which the mark is used, i.e. in this case "coupons" does not alter the fact that a domain name is confusingly similar to a trade/service mark. Wal-Mart Stores, Inc. v Richard MacLeod d/b/a, For Sale, WIPO Case No. D2000-0662 also concluded that a domain name is identical or confusingly similar to a trade mark when the domain name includes the trade mark, or a confusingly similar approximation, regardless of other terms in the domain name.

The Panel is also referred to WIPO Decisions that have considered the identicality or similarity of domain names incorporating the HARRODS mark. In Harrods Limited v Peter Pierre, WIPO Case No. D2001-0456 it was stated that "This Panel's view, consistently expressed in its prior decisions, is that common nouns are rarely distinguishing elements. Where, as here [harrodsdepartmentstores.com], 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 referred to Ansell Healthcare Products Inc. v Australian Therapeutics Supplies Pty Ltd, WIPO Case No. D2001-0110, Christie's Inc. v Tiffany's Jewelry Auction Inc., WIPO Case No. D2001-0075 and Arthur Guiness Son & Co. (Dublin) Ltd v Steel Vertigogo, WIPO Case No. D2001-0020 in support of its finding. 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 "were chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any website to which the domain names might resolve." In Harrods Limited v Vineet Singh, WIPO Case No. D2001-1162 the Panel stated that "the 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."

The domain name incorporates non-distinctive words and is confusingly similar to the Complainant's trade marks.

The Respondent has no legitimate interests in the domain name

The Complainant does not believe that the Respondent can demonstrate any circumstances that would evidence rights to and legitimate interests in the domain name for the purpose of paragraph 4(c) of the Policy.

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 the letters sent by the Complainant's solicitors [copies of which were included in the Complaint] and it is submitted that a bona fide offering of goods or services can not be made in view of the Complainant and the Complainant's trade marks.

The Respondent must have been aware of the Complainant at the time of registration of the domain name. The Panel in Harrods Limited v AB Kohler & Co., WIPO Case No. D2001-0544 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. This was also found to be the case by the Panel in Harrods Limited v Vineet Singh, WIPO Case No. D2001-1162 in relation to the domain name <harrodsgarments.com>. In view of the fame of the Complainant's HARRODS mark the Respondent can not 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 mark (paragraph 4(c)(iii) of the Policy).

Rather, the Respondent is merely "squatting" on the subject name and has made no active use thereof to date. The Panel is referred to Harrods Limited v Walter Wieczorek, WIPO Case No. DTV2001-0024 in which the Panel stated "considering that Respondent currently 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 18 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."

It is also submitted that the Respondent has not been commonly known by either of the names "Harrods" or "Harrods Coupons" (paragraph 4(c)(ii) of the Policy). No website can be found at the website address <www.harrodscoupons.com> and the Complainant submits that it is the name in which the domain name is registered, i.e. Coupon Corporation Inc, by which the Respondent is commonly known.

The domain name has been registered and is being used in bad faith

The Complainant submits that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website 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 Respondent's website or location or of a product or service on the website or location (paragraph 4(b)(iv) of the Policy).

Paragraph 4(b) of the Policy sets out a non-exclusive list of factors that evidence bad faith. 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 can not 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.

Similarly, if the complainant's mark is distinctive, as in the case of the HARRODS mark, bad faith is found if it is unlikely that the respondent would have selected the domain name without knowing of this reputation. In Veuve Clicquot Ponsardin, Maison Fondee en 1772 v The Polygenix Group Co., WIPO Case No. D2000-0163 the Panel held that "'veuveclicquot.org' is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith."

In Harrods Limited v Harrod's Closet, WIPO Case No. D2001-1027 the Panel stated that "The passive holding of the domain name for a significant period with knowledge of the Complainant's trademark rights in the name has been held to constitute bad faith. (See Arturo Salice S.p.A. v. Paul Izzo & Company, WIPO Case No. D2000-0537; Petland, Inc. v. COM.sortium, LLc, WIPO Case No. D2001-0430; Michael J Feinstein v PWAS Video Productions, WIPO Case No. D2000-0880; Empresa Brasileira de Telecomunicacoes S.A. - Embratel v Kevin McCarthy, WIPO Case No. D2000-0164)". Similarly in Harrods Limited v Walter Wieczorek, WIPO Case No. DTV2001-0024 the Panel stated that "Given 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. Likewise in Cellular One Group v Paul Brien, WIPO Case No. D2000-0028 the Panel concluded that it would be difficult, perhaps impossible, for the Respondent to use the domain name as the name of any business, product or service for which it would be commercially useful without violating Complainant's rights."

In Harrods Limited v Walter Trautner, WIPO Case No. D2001-1164 the Panel stated that "given the HARRODS Mark's reputation, the Panel finds it unlikely that (i) Respondent could commercially use the domain name without violating Complainant's trademark right under either German or English law, and that (ii) Respondent would have selected the domain name without knowing of the reputation of that mark. Respondent has failed to bring forward any circumstances indicating a (future) non-commercial use, a (future) commercial use which would not infringe the HARRODS Mark, or his lack of awareness of the HARRODS Mark at the time of registration of the domain dame."

Use of the domain name is therefore unnecessary for a finding of bad faith and the Complainant considers that the Respondent has both registered and used the domain name in bad faith. The Complainant also considers that the Respondent has no rights or legitimate interests in the domain name, which is confusingly similar to trade marks in which the Complainant has rights.

The Complainant asks for the Domain Name to be transferred to the Complainant.

B. Respondent

The Respondent made no Response to the Complainant’s contentions.

 

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that

(i) the contested domain name is 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 name; and

(iii) the domain name has been registered and is being used in bad faith.

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed to a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate." It is clear that this does not mean a default decision is automatically to be issued in favor of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.

A. Identical or Confusingly Similar

In the present case, it is clear that the Domain Name will be readily perceived as being comprised of the initial element "harrods" with the descriptive qualifier "coupons", together with the generic ".com" suffix.

That the Complainant has substantial worldwide rights and reputation in the HARRODS name is unchallenged. Whilst it may be possible to conceive of cases where the addition of a purely descriptive term might not immediately invoke or imply an association or connection with the famous HARRODS store, the Panel does not believe that the addition of "coupons" can be seen in any other context. A "coupon" is a "voucher" by another name. Famous businesses routinely offer customers such vouchers or coupons. The Complainant provided evidence that it does so.

The addition of "coupons" to the mark "harrods" in the Domain Name is consequently of no distinctive benefit for the Respondent. The Panel accepts the Complainant’s submissions on this point and finds that, for the purposes of the Policy, the contested Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights; and the requirements of Paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a Respondent’s rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

It is plain from the facts and the evidence that none of the above factors apply, and the Respondent has made no effort whatever and made no submissions to justify any claim to legitimate use, whether under these criteria or any other. Neither has it sought to challenge or deny any of the allegations made by the Complainant.

Given the finding that the Domain Name is confusingly similar to the Complainant’s recognizably world famous mark, the Panel considers it inconceivable that the Respondent could ever legitimately operate a business as "harrodscoupons" without the authority of the Complainant, which it manifestly does not have. It is also fanciful to imagine that the Respondent could contrive to justify its actions as "non-commercial or fair use", and no surprise, therefore, that it has not attempted to do so.

Consequently, the Panel accepts that the Complainant has demonstrated to the Panel’s satisfaction that the Respondent has no rights or legitimate interests in respect of the domain name; and the requirements of Paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

It is for the Complainant to prove, for the purposes of the Policy, that the Domain Name "has been registered and is being used in bad faith".

Consequently, the Panelist cannot accept the Complainant’s bare assertion (see Section 5 above) that "Use of the domain name is […] unnecessary for a finding of bad faith…".

However, the Panel does accept that it is certainly not necessary for such "use" to be explicit in the ordinary sense (e.g. by operation of a website). For the purposes of the Policy, the Panel agrees with the view that bad faith "use" may be implicit as a consequence of registration of a domain name, especially where the domain name at issue takes obviously unfair advantage of a famous mark or name.

With respect to the issue of "bad faith" registration and use, there is particular support for the contention that this may inherently be in "bad faith" from the judgment of Aldous L.J. in the UK Court of Appeal in the One In A Million case in respect of the registration of distinctive names, where the Judge said [initially in relation to Marks and Spencer], that "[t]he placing on a register of a distinctive name […] makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of [the registrant] and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered "; and, in relation to the other well-known Plaintiffs in that case:

"The trade names were well-known "household names" denoting in ordinary usage the respective [Plaintiff]. The appellants registered them without any distinguishing word because of the goodwill attaching to those names. It was the value of that goodwill, not the fact that they could perhaps be used in some way by a third party without deception, which caused them to register the names. The motive of the appellants was to use that goodwill and threaten to sell it to another who might use it for passing-off to obtain money from the respondents. The value of the names lay in the threat that they would be used in a fraudulent way. The registrations were made with the purpose of appropriating the respondents' property, their goodwill, and with an intention of threatening dishonest use by them or another. The registrations were instruments of fraud and injunctive relief was appropriate just as much as it was in those cases where persons registered company names for a similar purpose. "

[British Telecommunications plc. and Others v. One in a Million Ltd. and Others CA [1999] ETMR 61].

In the present case, the Panel is prepared to accept that HARRODS is undeniably famous and distinctive in the relevant context so that the Court’s conclusion is entirely appropriate in this case and applicable under the Policy. In registering the Domain Name, the Respondent effectively misappropriated the Complainant's rights and goodwill, with no legitimate reason for doing so, and implicitly used that registration in an unjustified attempt to create an association between its business and the Complainant’s fame and reputation.

The Panel has no doubt that this sort of misappropriation is just what the Policy was intended to address.

The Panel therefore holds that the domain name has been registered and is being used in bad faith and that Paragraph 4(a)(iii) of the Policy is also met.

 

7. Decision

For the foregoing reasons, and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <harrodscoupons.com> be transferred to the Complainant.

 

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Keith Gymer
Sole Panelist

Dated: April 14, 2003