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Harrods Limited v. The God Father [2004] GENDND 707 (23 June 2004)

1. The Parties

The Complainant is Harrods Limited, of Knightsbridge, 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 The God Father, of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <harrodsmoney.com> is registered with Melbourne IT trading as Internet Name Worldwide (“Melbourne IT”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2004. On May 12, 2004, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain name at issue. On May 13, 2004, Melbourne IT 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 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2004.

The Center appointed Mr. David H. Tatham as the Sole Panelist in this matter on June 15, 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

A. Complainant

The Complainant is the owner of over 150 years of international goodwill and reputation in the name HARRODS. Since about 1849, the Complainant and its predecessors have operated the world-famous Harrods Department Store in the Knightsbridge area of London, England. The Complainant’s flagship Harrods store is unique and highly prestigious, providing over one million goods and 50 separate services. The store typically serves approximately 35,000 customers each business day and it has become 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 an international mail order business that extends worldwide. 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.

In terms of Internet presence, the Complainant has been active on the Internet for some years and in particular, has actively operated the Internet website “www.harrods.com” since February 14, 1999. Representative pages from this website which included information on the Complainant’s London store and the products available, together with information about the Complainant’s history and the Harrods Group were annexed to the Complaint.

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 HARRODS mark, the word HARRODS 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. No doubt as a direct consequence of such reputation the Complainant has been the victim of a number of domain name disputes; however it has always been successful in the retrieval of domain names which seek to take unfair advantage of its world famous brand and in a number of the decisions the reputation of the Complainant and of the HARRODS name was confirmed.

The Complainant has used, registered or applied to register HARRODS as a trademark 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; travelling 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. As a result, the Complainant 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’s trademark portfolio includes the following registered trademarks, copies of which were annexed to the Complaint:

UK Trademark No. 1266810 registered May 10, 1986, for the mark HARRODS for various goods in Class 16.

UK Trademark 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.

UK Trademark No. 1305593 registered March 31, 1987, for the mark HARRODS for services in Class 42 including for beauty salons and hairdressing services.

Community Trademark No. 62414 registered April 1, 1996, for the mark HARRODS for a wide variety of goods and services in Classes 1 to 42.

US Trademark No. 1354693 registered August 13, 1985, for the mark HARRODS for services in Class 42 including retail mail order services of consumer goods.

US Trademark No. 2115836 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).

B. Respondent

The Respondent did not reply to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the only difference between the disputed domain name and the Complainant’s HARRODS trademarks is the addition of the word “money.” Since the HARRODS mark instantly evokes the famous Knightsbridge department store and its related products and services – which include banking services – adding “money” merely suggests that the website at “www.harrodsmoney.com” is connected to the Complainant.

Thus the commercial impression that would be conveyed to Internet users by any website at “www.harrodsmoney.com” is that the Respondent’s services are sponsored by, endorsed by, or affiliated to the Complainant. 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 Complainant referred the Panel to a number of previous WIPO decisions on the question of whether a domain name is “identical or confusingly similar” to a trade/service mark in which the Complainant has rights. In particular, it was held in Microsoft Corporation v. J Holiday Co., WIPO Case No. D2000-1493, that “Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.”

The Complainant also contended that in accordance with United States Olympic Committee v. MIC, WIPO Case No. D2000-0189, the addition of generic or descriptive terms (i.e. in this case “money”) does not alter the fact that a domain name is confusingly similar to a trade/service mark. Also, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a, For Sale, WIPO Case No. D2000-0662, concluded that a domain name is identical or confusingly similar to a trademark when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name.

The Panel was also referred to Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, where it was held that the addition of descriptive words would not reduce any confusing similarity with the domain names in question; and to Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219, where it was held that “Respondent’s addition of ‘games’ to its domain name does nothing to reduce its confusing similarity with Nintendo’s POKEMON mark.”

Finally, the Panel was also referred to WIPO decisions that have considered the identity or similarity of domain names incorporating the HARRODS mark. In Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456, it was stated that “This Panel’s view, consistently expressed in its prior decisions, is that common nouns are rarely distinguishing elements. Where, as here [<harrodsdepartmentstores.com>], 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”. The Panel went on to find that “rather than removing or reducing the risk of confusing similarity from the domain names when compared with the trademarks in question, in such situations confusing similarity was regarded as inevitable.” The Panel inferred that the domain names “were chosen by the Respondent to cause Internet users to believe that the Complainant endorses or is associated with any website to which the domain names might resolve.”

In Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, the Panel stated that “the linking between the Harrods department store name and trademarks, any use of the name Harrods in conjunction with a description such as ‘garments’ would suggest a false sense of origin or sponsorship for any associated goods or services. The word adds nothing distinctive and the emphasis is on the name Harrods and it is that which attracts the attention.”

In Harrods Limited v. Chris Brick, WIPO Case No. D2003-0876, the Panel found that “The mark HARRODS is world-famous and instantly evokes the Harrods department store at Knightsbridge, London.” (This case was wrongly identified in the Complaint as Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Get Register, WIPO Case No. D2003-0976.)

The Complainant concludes that because the disputed domain name incorporates its famous name and trademark with a non-distinctive word it is confusingly similar to the Complainant’s trademarks.

The Complainant contends that the Respondent cannot demonstrate any circumstances that would evidence rights to and legitimate interests in the domain name.

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 a website at the URL “www.harrodsmoney.com,” which is the domain name provider’s homepage and which appears to be a holding site. There is no information on the website to suggest a legitimate right to use the name “Harrods” by the Respondent.

In Inter-IKEA Systems B.V. v. Eveson Co. Ltd, WIPO Case No. D2000-0437, it was held that “In light of the fact that 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.”

The Panel was also referred to Harrods Limited v. Steve Bohn, WIPO Case No. D2003-0736, where the Panel held that “The Respondent has claimed that a Ms Sharon Harrod is the proprietor of the domain name…There is no information on the website to suggest a legitimate right by the Respondent to use the name ‘Harrods’. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark.”

The Respondent failed to respond to a letter sent by the Complainant’s solicitors, a copy of which was attached to the Complaint. Accordingly, the Complainant submitted that a bona fide offering of goods or services cannot be made in view of the Complainant and the Complainant’s trademarks. The disputed domain name could not have been chosen for any reason other than its association with the Complainant’s trademarks, or in order to attract, for commercial gain, Internet users to the Respondent’s website.

The Panel was referred to BP p.l.c. v. Kang-Sungkui Portraits Production, WIPO Case No. D2001-1097, where it was held that “The Respondent has parked the domain name in a holding site and while it has been held for over one year no effort has been made to use or prepare to use the domain name in a bona fide manner. Also, there is no evidence before the Panel that indicates that the Respondent is commonly known by the domain name or that there has been legitimate non-commercial or fair uses of the domain name.”

Also, in Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723, the Panel stated that “It is also important to remind that, as stated before, ‘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.”

The Respondent must have been aware of the Complainant at the time of registration of the domain name. The Panel in Harrods Limited v. AB Kohler & Co., WIPO Case No. D2001-0544, found it inconceivable that the domain names <harrodswatch.com> and <harrodsjewelry.com> could have been registered without the knowledge of the Complainant’s trademark. This was also found to be the case by the Panel in Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, in relation to the domain name <harrodsgarments.com>.

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 names without intent for commercial gain to misleadingly divert customers or to tarnish the Complainant’s trademark.

The Complainant also submitted that the Respondent has not been commonly known by the name “Harrods” and that it is the name in which the domain name is registered, i.e. The God Father, by which the Respondent is commonly known.

The Complainant submitted that 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.

The confusion caused by the Respondent could be described as ‘initial interest confusion’ and in this regard the Panel was referred to Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Nigh Inc, WIPO Case No. D2002-1128, where it was held in relation to a finding of bad faith that “The Panel finds that the Respondent’s registration and use of the Domain Names falls within this provision. The present case involves the deliberate diversion of Internet users who intend to access the Complainants’ website and the taking of unfair advantage of the Complainants’ goodwill. 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 Complainants’ site. In the view of the Panel, however … 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.”

Paragraph 4(b) of the Policy sets out a non-exclusive list of factors that could be evidence of bad faith. Previous Panel decisions have explicitly held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy. 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.

Similarly, if the Complainant’s mark is distinctive, as is the case with the HARRODS mark, bad faith is found if it is unlikely that the Respondent would have selected the domain name without knowing of this reputation. In Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, the Panel held that “<veuvecliquot.org> is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”

In Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024, the Panel stated that “Given the Harrods Mark’s reputation, the Panel finds it unlikely that Respondent could commercially use the Domain Name without knowing of the reputation of that mark.” Likewise in Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, the Panel concluded that it would be difficult, perhaps impossible, for the Respondent to use the domain name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights. Similarly, in Xerox Corp v. Stonybrook Investments Ltd, WIPO Case No. D2001-0380, the Panel stated that the domain names in question “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’.”

In Harrods Limited v. Walter Trautner, WIPO Case No. D2001-1164, the Panel stated that “given the HARRODS Mark’s reputation, the Panel finds it unlikely that (i) Respondent could commercially use the domain name without violating Complainant’s trademark right under either German or English law, and that (ii) Respondent would have selected the domain name without knowing of the reputation of that mark. Respondent has failed to bring forward any circumstances indicating a (future) non-commercial use, a (future) commercial use which would not infringe the HARRODS Mark, or his lack of awareness of the HARRODS Mark at the time of registration of the domain name.” Similarly, in Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456, the Panel held that “The word ‘harrods’ is obviously a well-known mark used by the Complainant in its day-to-day business. Its use by someone with no connection with the Complainant suggests opportunistic bad faith.”

In Harrods Ltd v. Dijitaldjs, WIPO Case No. D2001-1163, the Panel held that “The trademark HARRODS is registered in many countries around the world including in the country of residence of the Respondent, Saudi Arabia. In addition the mark is world famous. The Panel, therefore, finds that it is unlikely that the Respondent did not know of the said mark when he registered the Domain Name. The registration of the domain name must be considered done in bad faith.”

In Harrods Limited v. Surrinder Gill, WIPO Case No. D2003-0243 it was stated that “given the reputation of the Trademark, it is difficult to see how the Trademark could have been registered and used in good faith.” Similarly, the Panel in Harrods Limited v. Steve Bohn, WIPO Case No. D2003-0736, 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.”

The Complainant considers that the Respondent has both registered and used the domain name in bad faith. The Complainant also considers that the Respondent has no rights or legitimate interests in the domain name, which is confusingly similar to trademarks in which the Complainant has rights.

B. Respondent

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

6. Discussion and Findings

In order to prove its case under paragraph 4(a) of the Policy, the Complainant must establish three things:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

Each of these matters will now be examined separately.

A. Identical or Confusingly Similar

The Complainant has produced an impressive array of evidence as proof that it has rights in the name and trademark HARRODS, and the Panel is entirely satisfied that this is the case.

The Complainant also claims that HARRODS is a well-known or even a famous trademark and it would seem that several other Panels have already held this to be the case. This Panel is entirely in agreement with this unanimous view, and sees no reason to deviate therefrom. Indeed, although not mentioned by the Complainant, the Panel is aware of a case in the British High Court in which, as long ago as 1924, HARRODS LIMITED was considered to be “well-known as a business of established reputation and of wide range” (1924 41RPC74).

As to the disputed domain name being confusingly similar, the Complainant has again referred to a number of precedents in which it was held that confusing similarity exists when a domain name contains a Complainant’s trademark together with a descriptive or generic term, and has argued forcefully that this is so in this case.

In this case the disputed domain name consists of the Complainant’s famous trademark HARRODS conjoined to the generic word ‘money.’ The Complainant operates a bank as well as having trademark registrations for banking services, and of course money is the main raison d’être of all banks. The Panel has therefore no hesitation in finding that the Complainant has proved paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has referred to 11 previous domain name decisions in which it has successfully defended itself against persons attempting to register domain names such as:

<harrods.tv>
<harrodscloset.com>
<wapharrods.com>
<harrodsgarments.com>
<harrodsactual.com>
<harrodsdepartmentstores.com>
<harrodsstores.com>
<harrodsjewelry.com> (twice)
<harrodswatch.com>
<charlesharrods.com>
<harrodsuniversity.com>
<theharrods.com>

The Complainant in this case has produced a comprehensive array of precedents in support of its well-argued contention that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel is unable to think of any reason why the Respondent could reasonably be said to have rights or legitimate interests in respect of the disputed domain name, taking into account the fame of the name HARRODS, not only where the Respondent is located (London), but also worldwide. The Panel finds that the Respondent has no rights or legitimate interests and that paragraph 4(a)(ii) of the Policy has been proved.

Not one of the reasons set out in paragraph 4(c) of the Policy, any one of which could demonstrate a Respondent’s legitimate right to a disputed domain name, appears to be present in this case, although this list is not exhaustive. In this case, the Respondent has chosen, for whatever reason, not to respond, despite the fact that the Complainant has put forward a prima facie case so the onus was on him to refute it. Therefore it must be assumed that none of those reasons exist.

C. Registered and Used in Bad Faith

The Complainant alleges that, by registering the disputed domain name, the Respondent has attempted to attract users to it for commercial gain. However, since the disputed domain name is simply ‘parked’ at its registrar’s website, this allegation is stretching the truth somewhat.

However, the Complainant has a more credible argument, which is supported by a number of precedents, when alleging that the registration of the disputed domain name by the Respondent amounts to ‘initial interest confusion’ and that this is proof of bad faith. The Complainant also alleges that bad faith exists in a situation where a Complainant’s trademark is distinctive and it is unlikely that a Respondent would have chosen it without being aware of its reputation, and again this is supported by a number of precedents, several of them involving the HARRODS trademark. The Panel agrees with all of these arguments, and finds that the disputed domain name has been registered in bad faith.

However, paragraph 4(a)(iii) of the Policy requires both registration and use in bad faith and in this case, as already pointed out, there has been no apparent use of the disputed domain name, which was actually registered only comparatively recently on January 24, 2004. Nevertheless, it has been established from the very outset of the introduction of the Policy, that in given factual situations, non-use and inaction can constitute bad faith registration and use. The WIPO case of Telstra Communications v. Nuclear Marshmallows, WIPO Case No. D2000-0003, was one of the earliest Panel decisions, and it established (at paragraph 7.9) that “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” Since this decision was published the concept has been followed by numerous Panels.

The question that must always be asked in this type of case is: what are the ‘certain circumstances’ referred to in Telstra, and this can only be answered by reference to the facts of a specific case, and to the Respondent’s behaviour.

In this case, the Respondent has not put in an appearance, so his motives in registering the disputed domain name can only be guessed at. However, at least three of the five circumstances referred to in the Telstra case also apply in the present case, namely:

• the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use throughout the world;

• the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;

• it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being passing off or infringement of the Complainant’s rights under trademark law.

Given this, the Panel finds that the disputed domain name has also been used in bad faith, and that the Complainant has totally satisfied its burden under paragraph 4(a)(iii) of the Policy.

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 <harrodsmoney.com> be transferred to the Complainant.

David H. Tatham
Sole Panelist

Dated: June 23, 2004