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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harrods Limited v. Pete Lormer
Case No. D2003-0504
1. The Parties
The Complainant is Harrods Limited of Knightsbridge, London, United Kingdom of Great Britain and Northern Ireland, represented by DLA-Technology Media & Communications of United Kingdom of Great Britain and Northern Ireland.
The Respondent is Pete Lormer of Brooklyn, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <harods.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the "Center") on June 25, 2003. On June 25, 2003,
the Center transmitted by email to eNom a request for registrar verification
in connection with the domain name at issue. On July 2, 2003, eNom
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. In response to a notification
by the Center that the Complaint was administratively deficient, the Complainant
filed an amendment to the Complaint on July 22, 2003. The Center verified
that the Complaint together with the amendment to 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 July 29, 2003.
In accordance with the Rules, paragraph 5(a), the due date for the Response
was August 18, 2003. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on August 20, 2003.
The Center appointed Leon Trakman as the Sole Panelist in this matter
on September 2, 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 and Parties’ Contentions
A. Complainant
The Complainant is the owner, for the past 150 years, of goodwill and
reputation in its name, HARRODS and in its related trademarks. Since about 1849,
the Complainant and its predecessors have operated Harrods Department Store
in Knightsbridge, London, England. The Harrods Department Store has been promoted
internationally for many years and includes significant overseas exports and
an international mail order business. The Complainant also has introduced satellite
HARRODS 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,
its goodwill and reputation includes, among others, Harrods Estates, Harrods Bank
and Harrods Casino Online. The Complainant also has actively promoted
its business on the Internet for some years. In particular, it has actively
operated the Internet website "www.harrods.com" since February 14, 1999.
The Complainant contends that, as a result of the quality of the Complainant’s
goods and services, the volume of its customers, and the extensive advertisement
and promotion of its 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. It also contends that, as a direct consequence of its reputation,
it has been the Complainant in a number of domain name disputes; but that it
has always been successful in the retrieval of domain names which have sought
to take unfair advantage of its world famous brand. The Complainant cites in
support the following WIPO decisions: 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. Vineet Singh, WIPO Case No. D2001-1162;
and British Telecommunications Plc., v. One in a Million Limited [1998]
4 All ER 476 (CA).
The Complainant contends that it 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; traveling
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.
The Complainant contends further, that it 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 provides
a list of its registered trademarks, including attachments.
As its first ground, the Complainant contends that the domain name <harods.com>
is confusingly similar to the Complainant’s name HARRODS; and that the only
difference between the Respondent’s domain name and the Complainant’s HARRODS
trademarks is the omission of one "r" from the word "harrods."
According to the Complainant, since the HARRODS mark instantly evokes the famous
Knightsbridge department store and its related products and services, merely
omitting one "r" from the word "harrods" in the domain name
suggests that the website at "www.expedia.com" is connected to the
Complainant.
The Complainant contends further that, when Internet users enter the URL "www.harods.com"
they are taken to the homepage of Expedia at the URL "www.expedia.com."
However, the commercial impression conveyed to those users is that the Respondent’s
services are sponsored, endorsed by or affiliated with the Complainant. The
Complainant adds that the Respondent’s domain name 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. The Complainant
concludes, on this ground, that Respondent’s domain name suggests a false sense
of origin or sponsorship for any associated products, goods or services.
The Complainant’s second ground is that the Respondent has no legitimate interest
in the HARRODS mark. The Complainant alleges that the Respondent cannot demonstrate
any circumstances that would provide evidence of any rights to and legitimate
interests in the domain name for the purpose of satisfying paragraph 4(c)
of the Policy. It alleges that previous respondents against which it was the
Complainant also provided 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. The Complainant
argues, as well, that there is no information on this website to suggest a legitimate
right to use the name "Harods."
The Complainant draws attention to a pattern of conduct. It alleges that previous
registrants failed to respond to the letters sent by the Complainant’s solicitors;
and that each previous registrant engaged in a pattern of conduct whereby upon
receipt of such letters, the domain name was immediately transferred/sold. The
Complainant maintains, in light of this, that alerting the Respondent on this
occasion through correspondence would repeat the cycle of transfer/sale, and
by inference, defeating the purpose of the Complaint. As a result, the Complainant’s
solicitors did not contact the Respondent prior to filing this Complaint. The
Complainant provides evidence if this allegation by indicating that the Respondent’s
contact details set out in the WHOIS report are identical to those of the first
registrant of the domain name.
The Complainant concludes that the Respondent cannot make a bona fide
offering of goods or services in view of the Complainant and the Complainant’s
trademarks; that the disputed domain name could not have been chosen for any
reason other than because of its association with the Complainant’s trademarks;
and that the purpose of the registration was to attract, for commercial gain,
Internet users to the Respondent’s website.
The Complainant’s third ground is that the domain name in dispute was registered
and is being used in bad faith. In particular, the Respondent 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
marks 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). The Complainant maintains that the confusion caused by the Respondent
is described as "initial interest confusion" arising from the deliberate
diversion of Internet users who intend to access the Complainant's website and
by the Respondent taking unfair advantage of the Complainant’s goodwill.
The Complainant draws attention to Paragraph 4(b) of the Policy which
sets out a non-exclusive list of factors that evidence bad faith; and maintains
further, that previous WIPO Panel decisions have explicitly held that bad faith
is not limited to the factors set out in that Paragraph. In particular, where
a respondent cannot use a domain name without violating a 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. The Complainant maintains further
that the use of misspellings alone are sufficient to prove bad faith under paragraph 4(b)(iv)
of the Policy. The Complainant alleges that, if its mark is distinctive, bad
faith is found if it is unlikely that the Respondent would have selected the
domain name without knowing of this reputation.
The Complainant concludes that the Respondent has registered the domain name
in bad faith, that this constitutes bad faith, that the Respondent has no rights
or legitimate interests in the disputed domain name and that the domain name
is confusingly similar to trademarks in which the Complainant has rights.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
5. Discussion and Findings
A. Identical or Confusingly Similar
The domain name <harods.com> is confusingly similar to the Complainant’s
trademarks. There is only one difference in spelling between the Respondent’s
domain name and the Complainant’s HARRODS trademarks, namely, the omission of
one "r" from "harrods." Given that the Complainant is internationally
known as HARRODS, the omission of one "r" from "harrods"
in the disputed domain name, the use of the domain name in dispute is likely
to create the distinct impression on Internet users that the website at "www.expedia.com"
is connected to the HARRODS brand. Internet users are also likely to assume
that Respondent’s services are identical to, synonymous with, affiliated to,
or otherwise identified with the Complainant. The Panel is persuaded by a plethora
of prior cases that the marginal variation of a well known brand through misspelling
invites typo squatting by which respondents use confusingly similar domain names
to famous trademarks. See eg. Wachiova Corporation v. Peter Carrington,
WIPO Case No. D2002-0775; Xerox Corp.
v. Stonybrook Investments, Ltd., WIPO
Case No. D2001-0380; The Toronto-Dominion Bank v. Boris Karpachev,
WIPO Case No. D2000-1571; Veuve
Clicquot Ponsardin, Maison Fondée en 1772 v. Herreveld, WIPO
Case No. D2000-0776; Reuters Limited v. Global Net 2000, Inc., WIPO
Case No. D2000-0441; Arthur Guinness Son & Co (Dublin) Limited v.
Dean Macesic, WIPO Case No. D2000-1698;
Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a
Country Wallk a/k/a Cupcake Party, WIPO
Case D2000-0330; Oxygen Media, LLC v. Primary Source, WIPO
Case D2000-0362; Nicole Kidman v. John Zuccarini, a/b/a Cupcake Party,
WIPO Case No. D2000-1415; Hewlett-Packard
Co .v. Cupcake City, File No. FA000200093562; The Nasdaq Stock Market
Inc v. Shawn Cain d/b/a Star Inc., WIPO Case
No. D2002-1125; 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 Guinness Son & Co. (Dublin) Ltd v. Steel
Vertigogo WIPO Case No. D2001-0020.
The Panel also notes domain name disputes in which the Complainant’s marks
have been "targeted" for use by confusingly similar domain names,
including misspellings and that HARRODS have been a complainant in some of these
cases. See e.g., Harrods Limited v. Peter Pierre, WIPO
Case No. D2001-0456; Harrods Limited v. Vineet Singh, WIPO
Case No. D2001-1162; Harrods Limited v. Ronald Krupinski, WIPO
Case No. D2002-0642; Harrods Ltd. v. Dijitaldjs, WIPO
Case No. D2001-1163.
B. Rights or Legitimate Interests
The Respondent has no legitimate interests in the domain name sufficient to
satisfy the purpose of paragraph 4(c) of the Policy. The domain
name is not being used in connection with a bona fide offering of goods
or services in compliance with paragraph 4(c)(i) of the Policy. The website
to which the domain name resolves does not contain any information that reasonably
demonstrates any legitimate right to use the name "Harods"; and the
domain name bears no reasonable relationship to the business of the Respondent.
The registration of the domain name to direct Internet traffic to the Respondent’s
website also likely creates the distinct impression in the minds of those users
that there is an association between the Respondent and the Complainant’s established
brand. See e.g. Reuters Limited v. Global Net 2000 Inc., WIPO
Case No. D2000-0441.
It is evident, on the facts that the Respondent is not, nor has been, historically
associated with the name "Harods" as set out in paragraph 4(c)(ii)
of the Policy. It is also evident that the choice of that name bears no reasonable
relationship to either the name of the registrant, or to the registrant’s business.
The Respondent’s illegitimate use of the domain name is also linked to a prior
pattern of illegitimate conduct. The Complainant provides evidence that previous
registrants of confusingly similar domain names to its mark engaged in a comparable
course of dealings. On receipt of a letter of complaint from the Complainant’s
solicitors, the domain name was immediately transferred/sold to a third party.
The Complainant indicates that it failed to contact the Respondent prior to
filing the instant complaint, specifically to avoid a repeat transfer/sale in
the instant case. In further justifying its failure to notify the Respondent,
the Complainant establishes that the Respondent’s contact details as set out
in the WHOIS report are identical to those of the first registrant of the domain
name, Webinajiffy, as set out in the WHOIS report dated August 29, 2002.
While reluctant to encourage complainants generally not to notify Respondents
of an allegedly infringing domain name, the Panel accepts the explanation provided
in this case on its particular facts. In particular, where there is evidence
of a consistent pattern of conduct by which a respondent transfers or sells
a domain name on being notified by a prospective complainant that the name is
in dispute, and that transfer or sale renders the cancellation or transfer to
the Complainant of that domain name impossible or impracticable, the presumption
that a complainant is required ordinarily to notify the Respondent may be rebutted.
This presumption should not likely be invoked in order to ensure that prospective
respondents are able to answer allegations against them, and to avoid them being
subject to summary domain name determinations when they have not received a
prior opportunity to respond to those allegations.
C. The domain name has been registered and is being used in bad faith
The Panel concludes that the domain name in dispute was registered and used
in bad faith. Using negative reasoning, that domain name could not reasonably
have been chosen for any reason other than in order to use the Complainant’s
trademarks to attract, for commercial gain, Internet users to the Respondent’s
website. Doing so constitutes, not only an illegitimate use of the disputed
domain name, but also bad faith use in this case. For the Panel to hold otherwise
would be to undermine Complainant’s brand by misleadingly identifying its brand
with the Respondent. This relationship between illegitimate use of a domain
name and bad faith is evident in a series of WIPO decisions, including those
involving the HARRODS name. See e.g. Société des Bains de Mer
et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO
Case No. D2000-1319; Xerox Corp v. Stonybrook Investments, Ltd.,
WIPO Case No. D2001-0380; Harrods Ltd.
v. Dijitaldjs, WIPO Case No. D2001-1163;
Harrods Limited v. AB Kohler & Co., WIPO
Case No. D2001-0544; Harrods Limited v. Vineet Singh, WIPO
Case No. D2001-1162; Arthur Guinness Son & Co (Dublin) Limited v.
Dejan Macesic, WIPO Case No. D2000-1698;
Wachovia Corporation v. Peter Carrington, WIPO
Case No. D2002-0775; e-Duction, Inc. v. Zuccarini, WIPO
Case No. D2000-1369; The Nasdaq Stock Market Inc v. Shawn Cain d/b/a
Star Inc, WIPO Case No. D2002-1125;
Pig Improvement Co. v. Platinum Net, Inc., WIPO
Case No. D2000-1594.
The Respondent’s bad faith arises, too, from a deliberate intention to create
a false sense of origin or sponsorship for the Respondent’s products, goods
and services. Moreover, the Respondent intentionally attempted to attract for
commercial gain, Internet users to its website or other on-line location by
creating a likelihood of confusion among Internet users between the Complainant’s
marks and the source, sponsorship, affiliation or endorsement of the Respondent’s
website or location, or of a product or service on the website or location.
The Respondent intended to free-in bad faith, on the goodwill of the
HARRODS marks in which the Complainant enjoys exclusive rights. In engaging
in this practice, the Respondent’s action is contrary to paragraph 4(b)(iv)
of the Policy.
The Respondent’s bad faith is also inextricably linked to the Respondent’s
initiating conduct in registering this domain name with the deliberate intention
of causing ‘initial interest confusion’ between the Complainant’s famous marks
and the Respondent’s services and products. The Panel acknowledges a prior Panel
determination that such "deliberate creation of initial interest confusion
and the consequent diversion of Internet traffic is sufficient to establish
bad faith on the Respondent’s part." See e.g. Sony Ericsson Mobile Communications
International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v.
Party Night Inc., WIPO Case No. D2002-1128.
The Respondent has acted in bad faith in the instant case in consequence of
reasonable inferences arising from registering that domain name in bad faith,
as distinct from the requirement that it use that name subsequent to registration.
Paragraph 4(b) of the Policy sets out a non-exclusive list of factors evidencing
bad faith, but allows for the development of further factors. Moreover, prior
WIPO panels have clearly recognized additional factors in determining such bad
faith, not limited to those listed in paragraph 4(b) of the Policy. See
e.g. Harrods Ltd v. Dijitaldjs, WIPO
Case No. D2001-1163; Alta Vista Company v. Saeid Yomtobian,
WIPO Case No. D2000-0937; Veuve Clicquot
Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO
Case No. D2000-0163; Microsoft Corporation v. Microsof.com aka Tarek
Ahmed, WIPO Case No. D2000-0548.
The extension of such bad faith to include the current case, beyond those factors
listed in Paragraph 4(b) of the Policy is clearly requisite. Negatively
phrased, the Respondent has exercised bad faith by the very act of not being
reasonably able to use that name without having the effect of violating the
Complainant’s name and trademarks. Were the Respondent to do nothing beyond
register the name, that act of registration itself would constitute bad faith
because a bad faith use is an unavoidable inference, indeed consequence, of
the act of registration itself. See further, The Nasdaq Stock Market Inc.
v. Shawn Cain d/b/a Star Inc., WIPO Case
No. D2002-1125; Playboy Int’l v. SAND WebNames-For Sale, WIPO
Case No. D2001-0094; General Electric Co. v. Fisher Zvieli a/k/a Zvieli
Fisher, WIPO Case No. D2000-0377;
Dell Computer Corporation v. MTOC.A. and Diabetes Education Long Life,
WIPO Case No. D2002-0363; Reuters
Limited v. Global Net 2000 Inc., WIPO
Case No. D2000-0441; Wachovia Corporation v. Peter Carrington, WIPO
Case No. D2002-0775; Harrods Limited v. Walter Wieczorek, WIPO
Case No. DTV2001-0024; Cellular One Group v. Paul Brien, WIPO
Case No. D2000-0028; Xerox Corp v. Stonybrook Investments Ltd., WIPO
Case No. D2001-0380; Harrods Limited v. Walter Trautner, WIPO
Case No. D2001-1164; Harrods Limited v. Peter Pierre, WIPO
Case No. D2001-0456; Harrods Ltd., v. Dijitaldjs, WIPO
Case No. D2001-1163; Harrods Limited v. Coupon Corporation Inc.,
WIPO Case No. D2003-0105.
The Panel qualifies this holding immediately above in a key respect. Typo squatting
does not constitute per se bad faith. However, typo squatting, as was
clearly the case here, is strong evidence of bad faith, particularly where the
act of registration so enables the Respondent to use that registration at the
expense of the Complainant’s good will and reputation. Once a complainant has
adduced such evidence, as the Complainant clearly has done in the instant case,
only the most formidable evidence to the contrary would rebut the strong presumption
of bad faith use by the Respondent. Such a rebuttal would need to counter the
ordinary inference that, in registering a domain name that so entices Internet
users to the Respondent’s site, the Respondent is relying in bad faith on the
Internet user’s recognition of the Complainant’s well-known marks so as to promote
the Respondent’s services and products. There is no contrary evidence in the
current case that reasonably infers that the Respondent was acting in good faith
in the instant case.
Accordingly, the Panel holds that the Respondent has registered and used the
disputed domain name in bad faith.
6. 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, <harods.com>
be transferred to the Complainant.
Leon Trakman
Sole Panelist
Dated: September 4, 2003