harrodsgarments.com

WIPO Arbitration and Mediation Center

The Complainant is Harrods Limited ("Harrods"). It is a private company incorporated in England. Its principal place of business is in Knightsbridge, London, England. It is represented by Hammond Suddards Edge, Solicitors, of London, England.

The Respondent is identified as Vineet Singh whose details are given according to Network Solutions WHOIS database as being of Third Floor, Vraj Avenue, Navrangpura, Ahmedabad, Gujarat, India.

The domain name the subject of the dispute is <harrodsgarments.com>.

The Registrar with whom the domain name is registered is CORE Internet Council of Registrars, Geneva, Switzerland.

On September 24, 2001, and October 2, 2001, the Complaint by Harrods was received in hard copy and then by email.

On September 28, 2001, Registrar Verification was requested.

On October 4, 2001, the Registrar responded to the request.

On October 5, 2001, a Formal Notification of Complaint and Commencement of Administrative Proceeding was notified.

On October 30, 2001, a Respondent Default Notification was issued.

On November 9, 2001, a Notification of Appointment of Administrative Panel and projected decision date was notified.

The Panel having accepted the appointment and having considered the papers, delivers the following administrative panel decision.

Harrods is an English private company, limited by shares, with a principal place of business in Knightsbridge, London, England. It has carried on business for over 150 years.

The Knightsbridge store serves approximately 35,000 customers each business day. It is a large, well-known department store.

Harrods has used, registered or applied to register the trademark Harrods in a number of countries throughout the world for a wide variety of goods and services. There are extant registrations in the United Kingdom, the United States and a community trademark.

Harrods also owns and uses two domain names <harrods.com> and <harrodsonline.com>. The <harrodsonline.com> site is presently being developed for the purposes of selling Harrods merchandise internationally. That website is currently linked to the <harrods.com> site.

Little is known of the Respondent. He appears to be an individual living in Ahmedabad, Gujarat State, India. It is not known what connections he has with any particular business, service or industry. A cease and desist letter was ultimately responded to by solicitors in Ahmedabad who identify their client as being Mr. Vineet Singh. The letter states and may be taken as evidencing the fact that the Respondent is not involved in any international activities and has no connection whatever with the business of Harrods retail store.

It is assumed that the Respondent's site is inactive. It was registered by the Respondent on July 27, 2000.

Harrods claims that its flagship store in Knightsbridge, London, England, is unique and highly prestigious. The Harrods trademarks are said to have become synonymous with a wide variety of high quality luxury products and services.

It is claimed that the Harrods mark is famous, has acquired substantial goodwill which belongs exclusively to the Complainant and which has come to be recognised as an indicia of origin exclusively identified with the Complainant.

Details are given of the website and snapshots of pages from the website are exhibited to the Complaint.

The Complaint also exhibits the trade mark registrations.

Harrods maintains that by virtue of its two websites, the famous nature of the trade mark Harrods and its various trade mark registrations that a website <harrodsgarments.com> would be taken by any person who saw the website as being in some way associated with the Complainant. It is said that the addition of the words "garments" to the Harrods name in the domain name itself merely suggests to a visitor to the domain name in dispute that a person accessing it was able to purchase Harrods clothing and related goods online through the website. In short, Harrods claims that the disputed domain name and the Complainant's marks would appear to be one and the same by virtue of the overwhelming reputation and goodwill associated with the predominant aspect of the domain name, the Harrods name or trade mark.

As a result, the Complainant says that the disputed domain name suggests a false sense of origin or sponsorship.

The Respondent has defaulted and has not provided a Response to the Complaint. There is, however, in evidence his solicitors' Response to the cease and desist letter.

Notwithstanding the Respondent's default, it remains incumbent on the Complainant to make out its case. The Complainant must establish a breach of rule 4(a) of the ICANN Policy.

The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abusive domain name registrations.

As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The Respondent is given full opportunity to respond. In this case the Respondent has defaulted and placed no evidence nor any submissions before the Panel.

Rule 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) The Respondent's domain name is identical or confusingly similar to a trade mark 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 Respondent's domain name has been registered and is being used in bad faith.

Each of the three elements must be proved by a Complainant to warrant relief.

Each ground will be considered separately.

As to the first ground, Harrods claims that the disputed domain name is confusingly similar to the famous Harrods department store name and trademarks. The only difference between the disputed domain name and the Harrods trademarks is the addition of the word "garments" to the Harrods name.

Because of the linking between the Harrods department store name and trade marks any use of the name Harrods in conjunction with a descriptor 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.

There can be no doubt whatever but that the name Harrods is a famous name. A simple reading of the case index in any of the standard texts on passing off would reveal previous litigation where the Complainant or its predecessors have taken action to protect their mark.

The Panel also notes that "Brands, An International Review by Interbrand" published by Mercury Business Books in 1990, lists at page 125 famous brands in the retail, agency and credit industry. Of the eight businesses mentioned they include Harrods. In the separate entry for Harrods itself the following is stated: "It is perhaps curious to list as an international brand a retail store which, in effect, has only one main outlet – in Knightsbridge in Central London. Harrods, however, is recognised worldwide and has a powerful reputation for quality and excellence, all in a somewhat 'British' context. Harrods is, potentially, one of the most licensable brands in the world because, being a luxury retail brand, it could be applied equally successfully to almost any up-market product."

The nature of a famous or well known mark has been addressed on a number of occasions. Reference could be made to Mostert "Famous and Well Known Marks" (Butterworths, 1997) the content of which is devoted to various famous marks throughout the world. Reference should also be made to the useful discussion set out in British Telecommunications Plc v One in a Million Limited [1998] 4 All ER 476 (CA).

There would no doubt be a number of trademarks throughout the world which could be truly regarded as famous in every sense of the word. The Panel has no hesitation in finding that Harrods would be one of those.

Accordingly it follows that ground (i) is made out.

The second ground requires the Complainant to establish that the Respondent has no rights or legitimate interests in respect of the domain name.

As the Respondent has defaulted, it has provided no evidence nor any submissions in justification of any claim that it has rights to or legitimate interests in the disputed domain.

It is, however, relevant to note that the Complainant through its solicitors sent a cease and desist letter on December 6, 2000, to the Respondent. That letter required certain undertakings to be provided within 14 days. That letter was not responded to as a result of which a follow-up letter was sent on February 12, 2001. By letter of February 20, 2001, the Respondent's solicitors H Desai & Co replied. They confirmed that they represented the interests of their client Mr. Vineet Singh. They denied all the allegations contained in the cease and desist letter. They went on to state their instructions that their client was not aware of Harrods. Given what follows in the letter the denial is surprising and is disingenuous. The letter confirmed that their client the Respondent had registered the disputed domain. Various other denials were then set out in the letter. It concluded that the Respondent "may consider any offer from your client for purchase of the said domain name".

Whilst the letter from the Respondent's solicitors contained complete denials it singularly lacked any stated claim to any legitimate interest by the Respondent in the disputed domain name. Whilst the letter did indicate that the Respondent had not received any inquiry from anywhere in the world through the disputed domain name that might have been as a result of any assumed connection with the Complainant, it is significant that the letter also stated: "Our client is based in India. He has no international activities, which in any way is or can be connected with your client's business of retail store."

There is no evidence whatever of any business with which the Respondent may legitimately be connected that would be entitled to use the mark Harrods as part of a domain name associated with that business. It seems unlikely in the extreme that the Respondent would be associated with any business such as to give to the Respondent any rights or legitimate interests in a domain name which included the word Harrods whether on its own or in connection with some other descriptor.

It is not necessary to overburden this decision by reference to many Panelists’ decisions in earlier cases. Reference need only be made to the seminal case of Telstra Corporation Ltd v Nuclear Marshmallows (WIPO Case No. D2000-0003).

Of the various circumstances which could be raised by the Respondent in defence of his registration none are applicable. That the disputed domain name is or appears to be inactive is also a telling factor.

Accordingly, it follows that ground (ii) is made out.

The third ground requires the Complainant to establish that the domain name has been registered and is being used by the Respondent in bad faith. In respect of ground (iii) both of these heads must be made out – see the Nuclear Marshmallows case.

The Complainant alleges that the registration of the disputed domain name is a blatant attempt to capitalise unfairly on the fame of the Harrods trade marks and for the purpose of selling or otherwise profiting from the domain name and in all likelihood by transfer to a third party for valuable consideration in excess of the documented out-of-pocket costs directly related to the registration of the domain name.

The disputed domain name was registered on July 27, 2000. On December 6, 2000, the Complainant through its solicitors wrote its cease and desist letter to the Respondent. Ultimately a reply was received through the Respondent's solicitors on February 20, 2001. In that letter as previously stated, an indication was given that the Respondent might consider an offer for purchase of the domain name.

To this the Complainant's solicitors replied on March 5, 2001, indicating that Harrods was not prepared to purchase the disputed domain name from the Respondent. The letter went on to indicate, however, a preparedness to reimburse the Respondent for the initial registration costs and any associated transfer costs in relation to the domain name. Nothing further was heard.

Whether or not registration and use in bad faith is made out is a question of fact to be determined having regard to the facts of any particular case.

None of the available defences that are set out in paragraph 4(b) of the policy can apply in circumstances of this case. Again, applying what fell from the Panelist in the Nuclear Marshmallows case, it seems clear that the registration of the disputed domain in the present case has been in part at least for the purposes of blocking access to it by the Complainant and to utilise that block to extract from the Complainant or possibly some third party, a financial gain beyond the costs and disbursements directly associated with the registration of the domain name in the first instance.

Adopting a broad interpretation to "use" as it appears in the third ground, this Panelist finds that the use can include employment for a particular purpose which in the circumstances of this case can include blocking. Extended dictionary definitions of "use" include "exploit", "misuse", and "take advantage of".

In February 1999, the Complainant launched its website <harrods.com>. It seems unlikely in the extreme that the Respondent would not have been aware of that website. As grounds (i) and (ii) have been made out it seems reasonable to conclude in the absence of any evidence to the contrary that when the Respondent sought to register the disputed domain name he would likely have searched to establish whether or not the disputed domain was available or if there were any other similar domain names which incorporated the Harrods name or mark.

It, therefore, follows that there has been bad faith registration of the disputed domain name. For the reasons already set out, it similarly follows that the squatting or blocking amounts to passive use of the domain name in bad faith.

Whilst, in this case a number of inferences have been drawn because of the Respondent default, this Panelist considers that the inferences that have been drawn may properly be drawn from the primary facts that have been established. Taking together the primary facts with the undoubted fame of the Harrods name and mark, the conclusions reached which are adverse to the Respondent are inescapable.

Accordingly, it follows that both heads of ground (iii) are made out. The disputed domain has been registered and is being used in bad faith.

For the reasons set out above the Panel finds:

(a) The domain name <harrodsgarments.com> registered by the Respondent is confusingly similar to trade marks to which the Complainant has rights;

(b) The Respondent has no rights or legitimate interests in respect of the domain name;

(c) The Respondent's domain name was registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <harrodsgarments.com> be transferred to the Complainant.

John Katz QC
Sole Panelist

Dated: November 23, 2001