юридическая фирма 'Интернет и Право'
Основные ссылки










Яндекс цитирования

Рассылка 'BugTraq: Закон есть закон'





Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harrods Limited v. Barry Pring

Case No. D2007-0239

 

1. The Parties

The Complainant is Harrods Limited, 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 Barry Pring, Kiev, Ukraine.

2. The Domain Name and Registrar

The disputed domain name is <harrodson.com>. It is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2007. On February 19, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 21, 2007, Go Daddy Software 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 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 February 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2007.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on April 16, 2007. 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 Complainant operates a department store under the name Harrods in London, England. It also operates the website “www.harrods.com”.

The Complainant is the owner of several trademarks consisting of or containing the word “Harrods”. It notably owns the following trademarks:

- Word mark “HARRODS”, filed in the United Kingdom on September 19, 2000 in international class 35.

- Figurative trademark “Harrods”, filed as a Community Trademark on April 1, 1996 in international classes 1 to 42.

- Word mark “HARRODS”, filed as a Community Trademark on April 1, 1996 in international classes 1 to 42.

The Respondent registered the domain name on November 13, 2006. The domain name resolves to an active web page, hosted free courtesy of the Registrar, which mentions “This Web site is coming soon” and features links to estate agency software, photo gallery software and secure file transfer services.

 

5. Parties’ Contentions

A. Complainant

The Complainant first states that since about 1849, the Complainant and its predecessors have operated in London the world-famous Harrods Department Store, which today serves approximately 35’000 customers each day. According to the Complainant, the “HARRODS” mark has become a famous trademark, 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 mark.

Concerning the first test under the Policy, the Complainant submits that the domain name is confusingly similar to its trademarks. The Complainant points out that the only difference between the domain name and the “HARRODS” trademarks is the addition of the word “on”, which merely suggests that the web pages at <www.harrodson.com> are connected to the Complainant. According to the Complainant, the commercial impression conveyed to Internet users by the Respondent’s web pages is that the latter’s services are sponsored, endorsed or affiliated with the Complainant.

On the issue of similarity, the Complainant stresses, citing prior panel decision, that the “HARRODS” trademark is world-famous and instantly evokes the Harrods department store at Knightsbridge, London. In addition, the Complainant contends, also citing prior decisions, that a user of a mark cannot avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.

Concerning the second test under the Policy, the Complainant contends that the Respondent does not have rights to or legitimate interests in the domain name. The Complainant points out that the domain name resolves to a holding page, set up by the registrar, which states “This website is coming soon”. The Complainant submits that the Respondent has not been commonly known by the name “Harrods” and that the domain name could not have been chosen for any reason other than its association with the Complainant’s trademarks, and primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant 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. The Complainant disputes the Respondent’s argument, made in e-mail correspondence between the parties, that the incorporation of the “HARRODS” mark was merely a coincidence. According to the Complainant, the Respondent must have been aware of the Complainant’s trademark, as the latter is a well-known trademark.

Concerning the third test under the Policy, the Complainant submits that the Respondent has registered and used the domain name in bad faith. In this respect, the Complainant repeats that in e-mail correspondence with the Complainant, the Respondent offered to sell the domain name for an amount of GBP 7’500, which is far in excess of any reasonable administrative fee or out-of-pocket cost and therefore evidences the Respondent’s bad faith registration. In addition, the Complainant submits that the Respondent cannot use the domain name without violating the Complainant’s rights under the applicable law, and that it is unlikely that the Respondent could have registered the domain name without knowing of the reputation of the “HARRODS” trademark.

On this basis, the Complainant requests that the contested domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

However, in an e-mail sent to the Complainant on January 5, 2007, which was produced by the Complainant, the Respondent stated the following in relevant part:

“The business we are planning to setup in conjunction with the concerned domain name is in no way connected with, in competition with, infringing the business of your client. Infact, the business will be based entirely in Kiev, Ukraine and is a travel and business service business. The use of the name Harrodson is purely co-incidental to your client’s.”

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A), and

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B), and

3. The domain name has been registered and is being used in bad faith (see below, section C).

Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As regards the first issue, the Complainant has provided satisfactory evidence that it is the owner of numerous trademarks consisting of or containing the word “HARRODS”, registered throughout the world, including in the United Kingdom and as Community Trademarks.

Concerning the second issue, the Panel finds that the domain name is confusingly similar to trademarks owned by the Complainant. Numerous prior panels have held that when a domain name wholly incorporates a complainant’s registered mark, this may be sufficient to establish confusing similarity for purposes of the Policy (See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). This is especially the case where the elements that are added to the Complainant’s trademark are not distinctive (see Reliant Energy, Inc. v. Brent Graeter, WIPO Case No. D2001-0246; Freni Brembo S.p.A. v. Webs We Weave, WIPO Case No. D2000-1717).

In the present case, the Panel considers that the word “HARRODS”, which is included in the domain name and is identical to the Complainant’s trademarks, is the dominant part of the domain name. The addition of the suffix “on” is not sufficiently distinctive to alter the overall impression that the domain name is related to the Complainant’s trademark.

Therefore, the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

It is difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (See, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

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

(iii) you [Respondent] are making a legitimate non-commercial 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.”

On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name, for the following reasons.

First, there is no evidence that the Respondent owns any trademark, or any other right, corresponding to the domain name or to the word “HARRODS”. In addition, there is no indication that the Complainant has licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks. Further, there is no evidence that the Respondent has been commonly known by the domain name at any time prior to this dispute.

In addition, the Respondent makes no use of the domain name. The website to which the domain name resolves, although active, only contains a holding page, hosted courtesy of the Registrar and mentioning “This Web site is coming soon”. However, there are no elements on file evidencing any preparation by the Respondent to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The record contains the copy of an e-mail from the Respondent, in which the latter stated that it intended to set up a “travel and business service” business in Kiev, Ukraine. However, this undocumented statement is not sufficient to demonstrate preparations to use the domain name.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are non-exclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).

Paragraph 4(b)(i) provides as an instance of registration and use in bad faith:

“(i) circumstances indicating that you [Respondent] have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”

In the present case, Complainant’s counsel sent a cease and desist letter to the Respondent on January 3, 2007, requesting the transfer of the domain name. The Respondent answered by e-mail on January 5, 2007, contending that he had spent a considerable amount of time in graphic design, web build, business planning and management, and planned to “go live with the website in 2 weeks”.

On January 10, 2007, Complainant’s counsel reiterated the request that the domain name be transferred to the Complainant. By e-mail dated January 12, 2007, the Respondent answered that he considered the Complainant’s request to be unjustified, but would nevertheless agree to the transfer of the domain name against payment of an amount of GBP 7’500. The Respondent further stated that he was moving permanently to Ukraine to support the launch of his business.

There is no indication that the Respondent launched any business or “[went] live with the website” at any time between the exchange of e-mails mentioned above and the filing of these proceedings by the Complainant. On the contrary, as of the date this decision is issued, the website to which the domain name resolves still contains the Registrar’s holding page.

The Panel considers that these elements indicate the fact that the Respondent most likely registered the domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. In this respect, the Panel notes that the elements on record do not contain any evidence related to the Respondent’s costs related to the domain name. The Panel considers that an amount of GBP 7’500 is clearly in excess of reasonable out-of-pocket expenses related to domain name registration (see also Royal Bank of Canada, Dain Rauscher Corporation and Dain Rauscher Incorporated v. RBCD Ain Rauscher, WIPO Case No. D2001-1236).

Therefore, the Panel finds that the Respondent registered and used the domain name in bad faith.

 

7. Decision

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 <harrodson.com> be transferred to the Complainant.


Fabrizio La Spada
Sole Panelist

Dated: May 17, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0239.html

 

На эту страницу сайта можно сделать ссылку:

 


 

На правах рекламы:

Произвольная ссылка:





Уважаемый посетитель!

Вы, кажется, используете блокировщик рекламы.

Пожалуйста, отключите его для корректной работы сайта.