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Harrods Limited v. Simon Harkin Travel [2004] GENDND 1311 (28 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harrods Limited v. Simon Harkin Travel

Case No. D2004-0546

1. The Parties

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

The Respondent is Simon Harkin Travel of Stretford, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <harrodstravel.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2004. On July 23, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On July 26, 2004, OnlineNic, Inc. d/b/a China-Channel.com 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 29, 2004. 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 September 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2004.

The Center appointed Ian Blackshaw as the sole panelist in this matter on October 25, 2004. 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

Since 1849, the Complainant and its predecessors have operated the Harrods Department Store in the Knightsbridge district of London, England. The Store provides over one million goods and 50 separate services. The store typically serves some 35,000 customers each business day. It has become world famous and 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 a worldwide mail order business. 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. Harrods also has a British Airways travel concession at its Knightsbridge store.

The Complainant has actively operated the Internet website “www.harrods.com” since February 14, 1999. The site includes information on the Complainant’s London Store and the products and services available, together with information about the Complainant’s history and the Harrods Group or company.

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 travel bags, coach tour services and travel arrangements.

The Complainant’s trade mark portfolio includes the following registered trademarks:

United Kingdom Trade Mark No. 1266810 registered May 10, 1986, for the mark HARRODS for various goods in Class 16.

United Kingdom 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.

United Kingdom Trade Mark No. 1305590 registered March 31, 1987, for the mark HARRODS for services in Class 39 in relation to travel services including coach tour services and escorting of travellers.

Community Trade Mark Nos. 61697 and 62414 registered April 1, 1996, for the mark HARRODS for a wide variety of goods and services in Classes 1 to 42.

United States Trade Mark No. 1,354,693 registered August 13, 1985, for the mark HARRODS for services in Class 42 including retail mail order services of consumer goods.

United States Trade Mark No. 2,115,836 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).

The Respondent registered the Domain Name on March 7, 2004.

When an Internet user enters “www.harrodstravel.com” they are taken to the homepage of Lastminute.com at “www.lastminute.com,” which provides, inter alia, on-line travel services.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

As a result of the quality of the Complainant’s goods and services, the tremendous volume of its customers, and the extensive advertising 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.

Confirmation of the reputation of the Complainant and the HARRODS name may be found in many previous UDRP Decisions.

The domain name <harrodstravel.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 mark is the addition of the word “travel.” Since the HARRODS mark instantly evokes the famous Knightsbridge Department Store and its related products and services, which include travel services, adding “travel” merely suggests that the website at “www.lastminute.com” is connected to the Complainant.

Although when an Internet user enters “www.harrodstravel.com” they are taken to the homepage of Lastminute.com at “www.lastminute.com,” the commercial impression conveyed to Internet users by this website is that the Respondent’s services are sponsored, endorsed or affiliated with the Complainant, which is not, in fact, the case. 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.

The domain name incorporates a non-distinctive word and is confusingly similar to the Complainant’s trade marks.

Rights or Legitimate interests

The Respondent cannot 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 domain name resolves to the Lastminute.com website at “www.lastminute.com,” which allows Internet users to enter the Lastminute.com website and access their travel services online. There is no information on the website to suggest a legitimate right to use the name “Harrods” by the Respondent.

In view of the fame of the Complainant’s HARRODS mark, the Respondent cannot make a legitimate non-commercial or fair use of the domain name without intent for commercial gain or the intent to tarnish the Complainant’s trade mark (paragraph 4(c)(iii) of the Policy).

The Respondent has not been commonly known by the name “Harrods” (paragraph 4(c)(ii) of the Policy). The Complainant submits that it is the name in which the domain name is registered, that is, Simon Harkin Travel, by which the Respondent is commonly known.

Registered and Used in Bad Faith

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 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). Such confusion caused by the Respondent may be described as ‘initial interest confusion.’

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 those factors. Where a respondent cannot 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.

The Complainant’s mark is distinctive, and bad faith exists if it is unlikely that the Respondent would have selected the domain name without knowing of this reputation. Such use amounts to ‘opportunistic bad faith.’

B. Respondent

The Respondent was duly informed of but did not reply to the Complainant’s contentions.

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the 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.

A. Identical or Confusingly Similar

The Complainant has extensive registered rights in the trademark HARRODS for a wide range of goods and services, including travel, which predate the Respondent’s registration of the Domain Name.

Although the Domain Name consists of the word “harrods” and the word “travel,” it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods,” which is the quintessential and distinctive part of the Domain Name. See Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, where the Panel held that “… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services.” See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the Panel held that “The Domain Name consists of the word HARRODS plus a hyphen and the generic term “poker.” The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark.” Again, in Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456, it was stated that, consistent with previous decisions “….common nouns are rarely distinguishing elements. Where…. 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.” See further on this point, the cases of United States Olympic Committee v. MIC, WIPO Case No. D2000-0189; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a, For Sale, WIPO Case No. D2000-0662; and Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219.

The fact that, in the present case, when an Internet user enters “www.harrodstravel.com” they are taken to the homepage of Lastminute.com at “www.lastminute.com,” the commercial impression conveyed to Internet users by this website is that the services of the Respondent are associated with those of the Complainant. Indeed, it has been well observed in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 that “…consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark.” As this is not, in fact, the situation in the present case, the use by the Respondent of the Domain Name is confusing and misleading.

The Panel, therefore, concludes that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not replied to the Complainant’s contentions and the Panel must deduce from this that the Respondent does not have any grounds or legal basis for claiming any rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(c) of the Policy. In any case, the Complainant has not licensed or otherwise authorized the Respondent to use its trademark as part of its Domain Name. In Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437, it was held that “In the light of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and that the mark IKEA is not one that the Respondent would legitimately choose….. unless seeking to create an impression of an association with the Complainant, this Panel finds that the Respondent has no rights or legitimate interests in the domain name.”

Also, in view of the notoriety of the name Harrods both nationally and internationally (see Harrods Limited v. Chris Brick, WIPO Case No. D2003-0876, where the Panel found that “The mark HARRODS is world-famous and instantly evokes the Harrods department store at Knightsbridge, London”; and Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024, which considered the “HARRODS mark to be a well-known mark both inside and outside the United Kingdom”; and also Harrods Ltd. v. Dijitaldjs, WIPO Case No. D2001-1163, in which the mark was also held to be “world famous”), the Respondent must have been aware of the Complainant at the time of registration of the Domain Name. Similarly, in the case of Harrods Limited v. Steve Bohn, WIPO Case No. D2003-0736, it was held that “the fame of the trademark is such that the Respondent could not have registered the domain name unknowingly of the Complainant’s trademark and cannot use the domain name without infringing the Complainant’s mark.” Again, in Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723, the Panel stated “… ‘HARRODS’ may be considered as a well-known trademark. Therefore, it is quite unlikely that a ‘coincidence’ has been given in the present case. On the contrary, it seems that the Respondent was clearly aware of the existence of the Complainant’s trademarks and did not register the disputed domain name for other purposes than to include the Complainant’s trademarks in said domain name.” On the question of the Respondent’s awareness of the Complainant’s trademarks, see also the cases of Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544 and Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, concerning the domain names <harrodswatch.com> and <harrodsjewelry.com> and <harrodsgarments.com>, respectively.

Furthermore, the Respondent has not been commonly known by the name “Harrods” (paragraph 4(c)(ii) of the Policy; but by the name “Simon Harkin Travel” in which the Domain Name is registered.

The Panel, therefore, concludes that the Respondent does not have any rights to or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

In the absence of any explanations to the contrary by the Respondent, the Panel must deduce that, in view of the fame and reputation of the Harrods name and the abundance of trademark registrations in the United Kingdom and elsewhere in respect of it, the Respondent must have known or be taken to have known of these registrations when registering the Domain Name, and that the sole purpose of doing so was to attract, for financial gain, Internet users by creating confusion with the trademark of another (Paragraph 4(b)(iv) of the Policy).

In Harrods Limited v. Surrinder Gill, WIPO Case No. D2003-0243, it was stated that “given the reputation of the Trade Mark, it is difficult to see how the Trade Mark could have been registered and used in good faith.” Whilst in Harrods Limited v. Steve Bohn, supra, the Panel held that “the fame of the trademark is such that the Respondent could not have registered the domain name unknowingly of the Complainant’s trade mark and cannot use the domain name without infringing the Complainant’s mark.” On the same point of the Respondent’s awareness of the reputation of the Complainant’s mark when selecting and registering the Domain Name, see Harrods Limited v. Walter Trautner, WIPO Case No. D2001-1164.

In the particular circumstances of the present case, where, as noted above, there is ‘initial interest confusion’ of Internet users logging on to the web site of the Respondent, reference should also be made to the case of Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc, WIPO Case No. D2002-1128, in which on the question of bad faith it was held that “The confusion caused by the Respondent is ‘initial interest confusion’ and the Panel does not believe that internet users who have visited the Respondent’s site would be likely to be confused into believing that it was the Complainant’s site….. the deliberate creation of initial interest confusion and the consequent diversion of Internet traffic is sufficient to establish bad faith on the Respondent’s part.”

Furthermore, particular reference should also be made to the case of Xerox Corp. v. Stonybrook Investments, Ltd, WIPO Case No. D2001-0380, in which it was held by the Panel that the domain names in dispute “are so obviously connected with the Complainant and its services that their very use by someone with no connection with the Complainant suggests ‘opportunistic bad faith.’” On the same point of ‘opportunistic bad faith,’ see also Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

The Panel, therefore, concludes that the Domain Name in the present case was registered and is being used 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, <harrodstravel.com>, be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: October 28, 2004