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Harrods Limited v. Shin Jaeho [2004] GENDND 664 (30 June 2004)

1. The Parties

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

The Respondent is Shin Jaeho, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <hiharrods.com> (the “Domain Name”) is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2004. On May 13, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On May 13, 2004, Tucows 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 May 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2004.

The Center appointed Alfred Meijboom as the sole panelist in this matter on June 17, 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

The Complainant asserted and provided evidence in support of the following facts.

The Complainant and its predecessors have operated the Harrods Department Store in the Knightsbridge area of London, England since 1849. The Harrods Department Store has become a popular tourist attraction for people visiting London. It has been promoted internationally for many years and its international reputation has been reinforced by extensive overseas exports and by international mail order business that extends worldwide. The Complainant has also introduced satellite stores at international airports in Frankfurt, London, Kuala Lumpur, Lisbon and Vienna.

The Complainant is holder of many trademarks which include the word HARRODS and device trademarks which stylize the word HARRODS for a wide variety goods and services (the “HARRODS Marks”), including:

- The United Kingdom word mark HARRODS of March 9, 2001 (No. 2245927)

- The United Kingdom word mark HARRODS of March 19, 1993 (No. 1305593)

- The Community device mark HARRODS of October 23, 19998 (No. 62414)

- The US device mark HARRODS of August 13, 1985 (No. 1354693)

- The US word mark HARRODS of November 25, 1997 (No. 2115836)

Since February 14, 1999, the Complainant has actively operated the Internet website at “www.harrods.com.”

The Respondent registered the Domain Name on January 20, 2004.

The website at “www.hiharrods.com” appeared to be a holding page.

The Respondent did not answer the cease and desist letter and e-mail sent by the Complainant.

5. Parties’ Contentions

A. Complainant

According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the following three elements are met:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered and is being used in bad faith.

The Complainant makes the following assertions with respect to these elements:

(i) The Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights.

The only difference between the Domain Name and the HARRODS Marks is the addition of the word “hi,” which is a non-distinctive word. Adding a non-distinctive matter to another’s entire trademark generally may not avoid likely confusion. HARRODS in conjunction with a non-distinctive word suggests a false sense of origin or sponsorship for any associated goods or services. Therefore <hiharrods.com> is confusingly similar to the HARRODS Marks.

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Domain Name resolves to a website at “www.hiharrods.com,” which appears to be a holding page. There is no information on the website to suggest a legitimate right to use the name HARRODS by the Respondent. The Respondent has not been commonly known by the name HARRODS. A bona fide offering of goods and services cannot be made in view of the Complainant and its HARRODS Marks. The Domain Name could not have been chosen for any reason other than its association with the HARRODS Marks, in order to attract, for commercial gain, Internet users to the Respondent’s website.

(iii) The Domain Name was registered and is being used in bad faith.

The confusion caused by the Respondent could be described as initial interest confusion. The deliberate creation thereof and the consequent diversion of Internet traffic are sufficient to establish bad faith on the Respondent’s part.

The HARRODS Marks are famous and have acquired substantial goodwill. It is unlikely that the Respondent would have selected the Domain Name without knowing the HARRODS Marks’ reputation. The use of the Domain Name by someone with no connection with the Complainant suggests opportunistic bad faith.

Therefore the Complainant considers that the Respondent has both registered and is using the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant showed that it has several European and US trademark registrations for HARRODS for a wide variety of goods and services. Therefore, the Panelist finds that the Complainant has rights in the HARRODS Marks. The Panelist is further of the opinion that the Complainant has sufficiently shown that the HARRODS marks have a worldwide reputation and are well-known.

For the purpose of assessing whether the Domain Name is identical or confusingly similar to the HARRODS trademarks in which the Complainant has rights, the “.com” suffix is disregarded, it being a necessary component.

The relevant part of the Domain Name is “hiharrods.” The term “hiharrods” includes the trademark HARRODS in its entirety. The only difference between the term “hiharrods” and the HARRODS trademarks is the addition of the word “hi.” Since “hi” is a one syllable, non-distinctive word, the distinctive part of the Domain Name is HARRODS, which is identical to the Complainant’s HARRODS trademarks. In previous WIPO decisions it was held that the addition of non-distinctive or descriptive words do not reduce any confusing similarity with the domain names in question (e.g. Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, and Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046). In accordance with these decisions, and because the HARRODS Marks are well-known, which further enhances the distinctive character and scope of protection of the HARRODS Marks, the Panelist is of the opinion that the addition of “hi” does not reduce the likelihood of confusion between the HARRODS Marks and the Domain Name. As a result the Panelist considers the Domain Name, of which the distinctive part is identical to the HARRODS trademarks, confusingly similar to the HARRODS trademarks.

B. Rights or Legitimate Interests

According to Exhibit E which the Complainant filed with its Complaint, the Respondent used the Domain Name for redirecting to a website, which appears to be a holding page. This website does not seem to contain any suggestion of a legitimate right to use the Domain Name <hiharrods.com>. When the Panelist checked the Domain Name on June 28 and 30, 2004, it appeared to redirect to the official website of the Complainant, apparently without authorization and without apparent reason. Further, there is no evidence that Respondent is commonly known as Hiharrods or a similar name such as Harrods. There is no evidence of circumstances as described in paragraph 4(c) of the Policy or any other circumstances which could indicate that the Respondent has any rights or legitimate interests to the Domain Name.

Consequently, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Domain Name is composed of the distinctive term “Harrods,” which is identical to the Complainant’s HARRODS Marks, and the non-distinctive word “hi.” Because the HARRODS Marks are well-known worldwide, “Harrods” is very distinctive, and “Hiharrods” is – as far as the Panelist knows – not an existing word, the Panelist considers is very likely that someone who was familiar with the HARRODS Marks registered the Domain Name (e.g. Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723). Therefore the Panelist finds that the Respondent registered the Domain Name in bad faith.

The Complainant must also prove that the Respondent is using the Domain Name in bad faith. In this respect the Complainant asserted and provided evidence that the Domain Name was redirected to a website, which appeared to be a holding page, and the Panelist found the Domain Name to redirect to the Complainant’s official website at the moment.

According to paragraph 4(b) of the Policy an indication for use in bad faith is if the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website. When using the Domain Name the Respondent has created a likelihood of confusion apparently with the intention to take advantage of the reputation of the well-known HARRODS Marks to his own website.

By redirecting Internet users to an official website of the Complainant the Respondent generates traffic to the site linked to the Domain Name. This use of the Domain Name interferes with Complainant’s ability to control the use of its own trademark on the Internet, and Respondent may alter the link at his will as demonstrated by the fact that the Respondent changed the redirection from his own website to the Complainant’s website at a certain point of time and thus the Complainant has no ability to control the use of its own trademarks on the Internet (e.g. Altavista Company v. Brunosousa, aka Bruno Sousa, WIPO Case D2002-0109 and Ameriquest Mortgage Co. v. Jason Banks, WIPO Case D2003-0293). Hence, the Panelist finds that the Domain Name is 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 <hiharrods.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist

Date: June 30, 2004