WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Harrods Limited v. Focus Case No. D2008-1425 1. The Parties
The Complainant is Harrods Limited of London, United Kingdom, represented by Burges Salmon LLP, of Bristol, United Kingdom.
The Respondent is Focus of Cairo, Egypt. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Tucows, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2008. On September 19, 2008, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 19, 2008, the Registrar informed the Center that the registrant of the Disputed Domain Name was identified as “Focus”, and the Center advised Complainant accordingly on September 26, 2008. On the same date, Complainant amended the Complaint to name Focus as Respondent. 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 Respondent of the Complaint, and the proceedings commenced on September 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 21, 2008.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 3, 2008. 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
Complainant states that it and its predecessors have operated the world-famous Harrods Department Store in the Knightsbridge area of London, England, since 1849. Complainant states that its flagship Harrods store offers more than 1 million goods and 50 services, serving approximately 35,000 customers each business day. Complainant states that it has operated a website since February 14, 1999, using the domain name . Complainant states that previous panels under the Policy have recognized the HARRODS trademark, citing Harrods Limited v. Walter Wieczorek,WIPO Case No. DTV2001-0024; Harrods Limited v. AB Kohler & Co.,WIPO Case No. D2001-0544, Harrods Limited v. Harrod's Closet,WIPO Case No. D2001-1027; Harrods Ltd. v. Dijitaldjs,WIPO Case No. D2001-1163; Harrods Limited v. Chris Brick,WIPO Case No. D2003-0876; and Harrods Limited v. Vineet Singh,WIPO Case No. D2001-1162. Complainant states (and provides evidence to support) that it is the owner of numerous trademark registrations for the trademark HARRODS (hereafter, the “Harrods Trademark”), including the following:
- United Kingdom Trademark No. 1,266,820 for the mark HARRODS, registered on May 10, 1986, for goods in Classes 3, 14, 16, 18, 24, 25, 28, 29, 30, 21, 32, 33 and 34;
- United Kingdom Trademark No. 2,245,927 for the mark HARRODS, registered on September 19, 2000, for services in Class 35;
- Community Trademark No. 62,414 for the mark HARRODS, registered on April 1, 1996, for a wide variety of goods and services in Classes 1 to 42;
- Egyptian Trademark No. 150,321, registered on November 13, 1997, for the mark HARRODS for various goods in Class 25;
- Egyptian Trademark No. 150,322, registered on May 14, 2007, for the mark HARRODS for services in Class 35, including advertising, advertising schemes provided via the Internet, and the production of radio and television advertisements; and
- Egyptian Trademark No. 170,359, registered on May 30, 2007, for the mark HARRODS for various services in Class 43, including restaurant, bar and catering services and provision of holiday accommodation.
The Disputed Domain Name was created on July 11, 2008. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights because the trademark registrations cited above are evidence of Complainant's rights in the Harrods Trademark and because the addition of the word “experience” to the Harrods Trademark in the Disputed Domain Name is “non-distinctive.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because neither the Whois record nor Respondent's communications with Complainant indicate that Respondent is commonly known by the Disputed Domain Name; Respondent indicated in e-mails to Complainant that Respondent “acquired the domain name purely with the intention of selling it”; and “[i]n 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 to misleadingly divert customers or to tarnish the Complainant's trade mark.”
- The Disputed Domain Name has been registered and is being used in bad faith because Respondent offered to sell the Disputed Domain Name to Complainant for USD $1,300; Respondent “threaten[ed] to publish content on the website which would be harmful to the Complainant and where he attempts to blackmail the Complainant by insinuating that it would be cheaper and less time consuming for the Complainant to pay him for the domain name rather than pursuing the matter through UDRP proceedings”; and the Disputed Domain Name is so obviously connected with Complainant that Respondent must have know of the Harrods Trademark when it registered the Disputed Domain Name and Respondent cannot possibly commercially use the Disputed Domain Name in good faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief they have requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and ois being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is clear that Complainant has rights in the Harrods Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the Harrods Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “harrodsexperience”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. 0095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office's Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.') nor the TLD have any source-indicating significance”).
The Disputed Domain Name is not identical to a trademark in which Complainant has rights, as the second-level portion of the Disputed Domain Name contains the word “experience” in addition to the Harrods Trademark. However, Complainant need prove only that the Disputed Domain Name is “confusingly similar” to a mark in which Complainant has rights. The Panel agrees with a previous panel's decision also involving the Harrods Trademark, regarding the domain name , that the additional “word adds nothing distinctive and the emphasis is on the name Harrods and it is that which attracts the attention.” Harrods Limited v. Vineet Singh,WIPO Case No. D2001-1162. See also Harrods Limited v. Peter Pierre,WIPO Case No. D2001-0456 (finding the domain names and confusingly similar to the Harrods Trademark).
Accordingly, the Disputed Domain Name is confusingly similar to the Harrods Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant alleges that, inter alia, neither the Whois record nor Respondent's communications with Complainant indicate that Respondent is commonly known by the Disputed Domain Name; Respondent indicated in e-mails to Complainant that Respondent “acquired the domain name purely with the intention of selling it”; and “[i]n 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 to misleadingly divert customers or to tarnish the Complainant's trade mark.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, .
Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant appears alleges that bad faith exists pursuant to, at least, paragraphs 4(b)(i) and 4(b)(iv) of the Policy. With respect to paragraph 4(b)(i), Complainant includes as an exhibit to the Complaint a printout of the home page of Respondent's website stating: “www. for Sale!”; and e-mails from Respondent stating without support or elaboration that Respondent's “out of pocket expenses” for the Disputed Domain Name are “1300 $ tax free.” On this record, the Panel agrees with the cases cited by Complainant, including Sonera Ojy and Telia AB (Publ.) v. Daungsoo Ghim,WIPO Case No. D2002-0403, where the panel found that the respondent's negotiation was “a clear indication that the Respondent was willing to sell the registration in exchange for money more than likely in excess of his out-of-pocket costs” and that “[t]here could be no other reason for the Respondent registering a domain name comprising an unusual combination of trademarks with which he had no previous connection and in respect of which he had no rights or legitimate interest.”
Therefore, the Panel is convinced that Complainant has proven the third element 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 be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: November 17, 2008
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