The Complainant is Harrods Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Burges Salmon LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Discount-Harrods, Shropshire, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <discount-harrods.com> is registered with Wild West Domains,
Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2006. On August 24, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On August 24, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response. The Center transmitted by email the Notification of Complaint Deficiency on August 25, 2006 and the Complainant submitted Amendment to Complaint by email on August 29, 2006. 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 August 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2006.
The Center appointed George R. F. Souter as the sole panelist in this matter on October 6, 2006. 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 has demonstrated to the Panel considerable common law and registration rights to the trademark HARRODS, and their rights in this trademark have already been considered in, for example, Harrods Limited v. Vision Exact,
WIPO Case No. D2003-0723. In that case, which, inter alia referred to prior cases concerning the trademark, the Complainant’s HARRODS trademark was stated by the Panel as a matter of fact to be “well known both inside and outside the United Kingdom”. The Panel in the present case regards that statement as indisputable.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that the domain name <discount-harrods.com> is confusingly similar to the Complainant’s trademark, and argues, with references to a number of prior WIPO Panel decisions, that the domain name at issue merely adds a non-distinctive word to the HARRODS trademark and is, consequently, to be considered as confusingly similar.
The Complainant claims that the absence of any obvious linkage to the Respondent’s name, and the fact that the registration took place without the Complainants’ permission, prove that the Respondent had no rights or legitimate interests in the domain name at issue.
The Complainant alleges that the domain name at issue was registered and is being used in bad faith, and, in particular, argues that if a 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 its registration. The Complainant also draws the Panel’s attention to the fact that the Respondent e-mailed the Complainant on August 2, 2006, stating: “Now if you want to buy this domain name from me I would be prepared to sell it to you, so you can make me an offer and I will consider it …. I will not transfer the domain name to yourselves.”, and alleges that a request for a sum far in excess of any reasonable administrative fee or out-of-pocket costs evidences the bad faith registration.
The Complainant requests that that the domain name at issue be transferred to themselves.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
He did, however, write to the Center, on August 31, 2006, referring to “a big concern like harrods [sic]”, and stated that he was “prepared to accept £1000 for the domain name”.
6. Discussion and Findings
For the complainant to succeed, the Panel must, under paragraph 4(a) of the Policy, be satisfied:
(i) that the domain name registered by the respondent 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 domain name; and
(iii) that the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
In the Panel’s opinion, the addition of the word “discount” to the name of a famous department store is, in this context, non-distinctive and trivial. The Panel, accordingly, decides that the Complainant’s trademark and the domain name at issue are confusingly similar, and, accordingly, that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In his letter to the Center dated August 31, 2006, referred to above, the Respondent stated that the domain name at issue “was purchased by myself for a turnkey website i purchased off the internet” [sic], and “as far as i am aware i haven’t done anything illegal and i can purchase any domain i want if its for sale” [sic].
The Panel is satisfied, in the light of the above, that the Respondent has no rights or legitimate interests in the domain name at issue, and accordingly, that the Complainant has satisfied the test of paragraph 4(a)(ii) of Policy.
C Registered and Used in Bad Faith
It follows that a finding in favour of the Complainant in connection with the tests of paragraphs 4(a)(i) and (ii), is likely to result in a finding that the domain name at issue was registered in bad faith, and the Panel so finds in this case.
The test of paragraph 4(a)(iii) is a dual one, and the Panel must also be satisfied that the domain name at issue has been used in bad faith.
It has been the consistent finding of the Panel in these type of proceedings that an offer to sell a domain name to the proprietor of a confusingly similar trademark for a sum greatly in excess of any reasonable administrative fee or out-of-pocket costs evidences use in bad faith.
The sum of £1000 is clearly above the threshold at which use in bad faith can be found, and the Panel so finds in this case.
The Panel, accordingly, finds that the Complainant has also satisfied the test of 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 <discount-harrods.com> be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Dated: October 20, 2006
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