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Harrods Limited v. Virtual World Internet [2002] GENDND 935 (24 June 2002)

WIPO Arbitration and Mediation Center

The Complainant is Harrods Limited of 87-135 Brompton Road, Knightsbridge, London SW1X 7XL, United Kingdom. The Complainant is represented by Messrs Hammond Suddards Edge of 7 Devonshire Square, Cutlers Gardens, London EC2M 4YH, United Kingdom.

The Respondent is Virtual World Internet, a company incorporated in England whose registered office is at Berkeley Square House, Berkeley Square, London S1X 6EA, United Kingdom. The Respondent is not represented and indeed has not filed a Response to the Complaint.

The domain name in dispute is <virtualharrods.com>. The Registrar of the domain name is Network Solutions Inc., of 505 Huntmar Park Drive, Herndon, Virginia VA 20170, United States of America.

3. Procedural History

The Complaint was received by the Center on April 29, 2002. A request for verification of the domain name was made to the Registrar Network Solutions Inc. on April 30, 2002. A response was received by email from Network Solutions Inc. on May 3, 2002 verifying the registrant of the domain name as the Respondent Virtual World Internet with an administrative contact of Fortune Cooke's, The Lightwell, 12-16 Laystall Street, London.

Notification of the Complaint and commencement of the administrative proceedings was given by the Center to the Respondent on May 8, 2002 by post, fax and by email. No Response having been received from the Respondent, Notification of Respondent's Default was given by email to the Respondent on May 29, 2002.

No further communication having been received from the Respondent an administrative panel was appointed on June 10, 2002 consisting of a sole panelist Mr. Clive Thorne with a projected decision date of June 24, 2002.

The Panelist has submitted a statement of acceptance and declaration of impartiality and independence. The Panel understands that the appropriate fees have been paid by the Complainant. The language of the administrative proceeding is English.

The Complainant trades as the world famous Harrods Department Store in the Knightsbridge area of London. It has done so for more than 150 years since about 1849. The Complainant's flagship store is unique and highly prestigious. It typically serves approximately 35,000 customers each business day and has become a "mandatory" stop for tourists visiting England. The Complainant asserts that its trade marks "Harrods" have become synonymous with a wide variety of high quality luxury products and services.

At Annex D to the Complaint the Complainant exhibits copies of trade mark register print outs and certificates. In particular the Complainant refers to the following trade mark registrations:-

(i) US trade mark registration number 1354693 for the mark "HARRODS" in class 42.

(ii) US trade mark application number 15.751757 for the mark "harrodsonline" in class 35.

(iii) UK trade mark number 1266810 for the mark "HARRODS" in class 16.

(iv) UK trade mark number 1274160 for the mark "HARRODS" in class 9.

(v) UK trade mark number 2245927 for the mark "HARRODS" for services in class 35 referring inter alia to "online media".

(vi) European Community trade mark number 62414 for the mark "HARRODS" in class 42.

The Complainant also relies upon two domain names <harrods.com> and <harrodsonline.com> which provide access to websites that offer Harrods merchandise for sale in the UK. The Complainant is apparently currently developing the <harrodsonline.com> site in order to sells Harrods merchandise in other parts of the world. The Complainant exhibits at Annex E to the Complaint a copy of the WHOIS information for the sites.

The Complainant asserts that as a result of the quality of its goods and services, the tremendous volume of its customers and extensive advertisement and promotion of the mark "Harrods" the mark has become famous and 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.

The Complainant at paragraph 16 of the Complaint relies upon a number of previous Panel decisions as support for the proposition that the mark "HARRODS" is a famous mark. The present panel does not find previous decisions particularly helpful since they undoubtedly turned upon the evidence before the deciding Panel. Nevertheless given the evidence of substantial goodwill and trading activity adduced by the Complainant the present panel is prepared to accept that the mark is famous. It is also on the evidence adduced by the Complainant prepared to find that the Complainant owns the trade mark rights referred to above.

No Response having been filed by the Respondent the Panel has no alternative but to consider the Complainant's submissions with regard to the Respondent's activities.

Having considered the evidence put before it with regard to ownership of the domain name in dispute set out in Annex A to the Complaint and the Registrar's verification the Panel finds that the domain name <virtualharrods.com> is registered by the Respondent. The Panel also finds, having considered Annex G to the Complaint ,that the Respondent has registered other domain names which incorporate other "famous" trading names including; <virtualdell.com>, <virtualrbsnatwest.com>, <virtualbmw.com>, <virtualmarriotthotels.com>, <virtualjal.com>, <virtualfour-seasons.com>, <virtualual.com> and <virtualsaa.com>.

In order to succeed in its request for an order to transfer the domain names to the Complainant the Complainant has the burden of proof of ensuring that each of the elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") are present. These are as follows:-

(i) The Respondent's domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the domain names;

(iii) The Respondent's domain names have been registered and are being used in bad faith.

The Panel proceeds to deal with each of these in turn.

The Panel has already found that the Complainant has registered trade mark rights in the mark "HARRODS" as well as a substantial trading goodwill in the mark.

In this case the only difference between the Respondent's chosen domain name and the Complainant's trade mark "HARRODS" is the addition of the word "virtual" to the Harrods name. The Complainant relies on the fact that the mark "HARRODS" instantly invokes the Knightsbridge department store whilst adding "virtual" merely suggests that internet users using the website are able to purchase the Harrods and goods and services from home online. In other words it conveys the idea that the Complainant's famous department store is online and/or the Complainant's goods and services are available on the internet. The impression given to web users is that the Respondent's domain name and the Complainant's marks are one and the same, that is, that any associated goods or services are sponsored endorsed or affiliated with the Complainant.

The Panel, in the absence of any submission by the Respondent accepts the Complainant's submission and finds for the Complainant under this head.

The Complainant submits that the Respondent cannot demonstrate any legitimate interest in the domain name. In support of this submission it relies on the fact that there is no evidence that the Respondent has 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 the Complainant's Harrods trade marks name and store". The Complainant asserts that the Respondent is merely "squatting" on the subject name and has made no active use to date.

In the absence of any counter submission by the Respondent the Panel accepts the Complainant's submission on the basis that there is no evidence before it demonstrating any legitimate interest in the domain name on the part of the Respondent.

The Complainant submits that the Respondent's registration of numerous domain names using the prefix "virtual" demonstrates a bad faith pattern of engaging in a pattern of registering domain names featuring the well known trade marks of others, for example "Dell", "BMW", "RBS NatWest" and "Marriott Hotels". This leads to the conclusion that the Respondent is in the business of acquiring domain names that incorporate well known marks leading to an inference that it has no right or intention to put these to a legitimate use.

It follows, according to the Complainant, that the Respondent has registered the domain name in a blatant attempt to capitalize unfairly on the fame of the trade mark Harrods.

Again in the absence of any counter evidence from the Respondent the Panel is prepared to accept this evidence as evidence of bad faith on the part of the Respondent.

It follows that the Complainant has succeeded in its complaint.

6. Decision

The Complainant requests that the Panel issues a decision that the contested domain name be transferred to the Complainant. The Panel having found for the Complainant orders that the domain name in dispute, <virtualharrods.com> be transferred from the Respondent to the Complainant.

Clive Duncan Thorne
Sole Panelist

Dated: June 24, 2002