WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Harrods Limited v. N/A, Marco Iorio Case No. D2008-1684 1. The Parties
The Complainant is Harrods Limited, of Knightsbridge, London, United Kingdom, represented by Burges Salmon LLP, United Kingdom.
The Respondent is N/A, Marco Iorio, of Wokingham, Berkshire and High Wycombe, Buckinghamshire, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2008. On November 5, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 5, 2008.
On December 5, December 10, and December 16, 2008, the Center received informal email communications from the Respondent. On December 12, 2008, the Complainant filed supplemental email correspondence with the Center. These communications are detailed in paragraph 4(b) below.
The Center appointed David Perkins as the sole panelist in this matter on December 18, 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 4.A The Complainant
4.A.1 The Complainant is the internationally well known department store in Knightsbridge, London. The Company has been trading from that address since 1849. It retails over one million items of merchandise and provides over 50 separate services.
4.A.2 Apart from its flagship store in Knightsbridge the Complainant operates satellite stores at major airports, including London Gatwick, London Heathrow, Kuala Lumpur and Lisbon. A number of department stores in the People's Republic of China, Japan and Singapore offer a selection of the Complainant's merchandise and, such merchandise is also sold on several cruise liners including the Queen Mary 2 and the Queen Victoria.
4.A.3 The Complainant has operated a website since February 1999, “”. The HARRODS registered trademarks
4.A.4 The Complainant is the proprietor of registered trademarks for HARRODS in many countries around the world, including the following:
Country Reg. No. Mark Class(es) Dates of Application and Registration
United Kingdom
1,038,719
HARRODS
8: 9: 14: 16: 18: 20: 24: 25: 28: 29 to 31: 33 and 34
Application November 21, 1974
United Kingdom
2,245,927
HARRODS
35
Application September 19, 2000
Registered March 9, 2001
European Community Mark
000062414
HARRODS
1 TO 42
Application April 1, 1996
Registered October 23, 1998
4.A.5 In relation to the well-known status of the HARRODS trademark, the Complainant refers to 10 cases which it has successfully brought under the Policy in relation to that mark. They are:
Harrods Ltd v. Walter Wieczorek,WIPO Case No. DTV2001-0024. This related to the disputed domain name . The panel considered HARRODS to be a well-known trademark and the disputed domain name was ordered to be transferred to the Complainant.
Harrods Ltd v. AB Kohler & Co,WIPO Case No. D2001-0544. This related to the disputed domain names and . Both domain names were ordered to be transferred to the Complainant. The panel characterized HARRODS as “a famous name, used worldwide to denote the goods and services of the Complainant”.
Harrods Ltd v. Harrod's Closet,WIPO Case No. D2001-1027. The disputed domain name was ordered to be transferred to the Complainant.
Harrods Ltd v. Dijitaldjs,WIPO Case No. D2001-1163. The disputed domain name was ordered to be transferred to the Complainant.
Harrods Ltd v. Vineet Singh,WIPO Case No. D2001-1162. The disputed domain name was ordered to be transferred to the Complainant. The panelist said in his decision
“There can be no doubt whatever but that the name Harrods is a famous name.”
Harrods Ltd v. Chris Brick, WIPO Case No. D2003-0876. The disputed domain name was ordered to be transferred to the Complainant. The founder of the Complainant was Charles Henry Harrod. The panel stated:
“The mark HARRODS is world-famous and instantly evokes the Harrods department store in Knightsbridge, London.”
Harrods Ltd v. Surrinder Gill,WIPO Case No. D2003-0243. The disputed domain name was ordered to be transferred to the Complainant. In relation to the HARRODS trademark, the panelist referred to
“ the distinctive nature and worldwide reputation of the trademark.”
Harrods Ltd v. Peter Pierre,WIPO Case No. D2001-0456. The disputed domain names and were ordered to be transferred to the Complainant. The panel held that
“… the Complainant's HARRODS trademark is well-known around the world in connection with the Complainant's famous department store.”
Harrods Ltd v. Steve Bohn,WIPO Case No. D2003-0736. The disputed domain name was ordered to be transferred to the Complainant. The panelist stated:
“The Panel considers it established that HARRODS is a renowned, famous and recognizable trademark … .”
Harrods Ltd v. Vision Exact,WIPO Case No. D2003-0723. The disputed domain name was ordered to be transferred to the Complainant. The panel stated:
“It is also important to remind that … “HARRODS” may be considered as a well-known trademark.” 4.B The Respondent
Although no Response was filed by the Respondent, set out below is the chronology of communications between the Complainant's solicitors, the Respondent and the Center.
September 12, 2008: Cease and Desist letter sent to the Respondent at the address given in the WHOIS Search result, namely The Barn, 72a Waterloo Road, Wokingham, Berks.
September 30, 2008: from the subsequent email (below) it appears that the Respondent spoke by telephone to Ms.. Loxton of the Complainant's solicitors.
October 10, 2008: email from Ms. Loxton to the Respondent following that telephone conversation, reiterating the Complainant's request for transfer of the disputed domain name.
October 13, 2008: the Respondent said he was away for 2 days but would deal with the matter thereafter.
October 15, 2008: Ms. Loxton emailed the Respondent the requisite form for transfer of the disputed domain name to the Complainant.
October 22, 2008: the Respondent replied in the following terms:
“Hi KATHERINE, thanks for your mail i am happy to transfer the website but i need to know what your clients are willing to offer for my campaign , the website comes with the I LOVE campaign in your catorgory this is being offered to HARVEY NICHOLS and SELFRIDGES, the highest bidder gets to use the campaign and prevent the others from doing it, the websites that are not won by one of the companys will be turned into forums for people to leave there views on the companys, no advertising will be sold on these sites and they will not be used to generate money, they will purely be used as fan sites for the companies for people to leave there views on why they love them, i give your clients the opportunity to buy into THE I LOVE campaign which is what is being offered for sale, the web site comes with it, we purchased the web sites to stop people stealing the idea, so if you could please send in your offers for what your clients will be willing to pay for the campaign then it will be cross referenced with the other offers and a decision will be made from there, if you still feel that you can take me to court over this then im going to have to tell you to do so, i have read all that you told me from the other cases that you mentioned but i dont feel that mine falls into the same genres of what you stated. What I am offering for sale is the I LOVE campaign, this is an advertising idea for the companies we have approached or will be approaching , i find it hard to believe that you feel you can just take an idea of someone this would pull the bottom out of all advertising and make advertising houses unable to sell there ideas, this is our idea the I LOVE campaign and we have spent a lot of time putting this together, we would be very happy to deal with HARRODS but that all depends on what your clients want to do. I would be more than willing to have a meeting with you or your clients to discuss this further,
regards marco”
October 22, 2008: Ms. Loxton replied rejecting the Respondent's offer and proposed a counteroffer that the Complainant would pay the Respondent's “out of pocket expenses in having acquired the domain name” in consideration for transfer of the disputed domain name to the Complainant.
October 22, 2008: the Respondent asked what was meant by “out of pocket expenses”.
October 22, 2008: Ms. Loxton replied as follows:
“On transfer of the domain name, Harrods will reimburse the amount for which you bought it (subject to a reasonable cap). Please therefore provide details of the cost to you of having registered the domain name.”
October 23, 2008: the Respondent replied that he would be meeting to discuss the matter with his solicitors on October 27, 2008.
October 23, 2008: Ms. Loxton replied saying that she would be happy to talk to the Respondent's solicitors.
October 23, 2008: the Respondent replied.
October 27, 2008: Ms. Loxton asked for an update following the Respondent's meeting with his solicitors.
October 28, 2008: the Respondent replied that he or his solicitors would make contact with her in due course.
October 29, 2008: the Complainant's solicitors requested a reply to their letter of September 12, 2008.
October 30, 2008: the Respondent offered to transfer the disputed domain name to the Complainant for £1,000.00.
November 4, 2008: the Complainant's solicitors copied the Respondent (by email) with the Complaint.
November 10, 2008: the Center formally notified the Respondent of the Complaint.
December 5, 2008: the Center sent the Respondent Notice of Default of Response.
December 5, 2008: the Respondent emailed the Center stating:
“I gave the correct details to harrods or there solicitors but they chose not to give you the right details, I appreciate they are a big company but it would be nice for you to hear both sides but it appears you have made up your minds already as you don't have the facts that are needed to make this fair, I ask again for a contact number so I can discuss thismarco.”
December 10, 2008: the Center acknowledged that email.
December 12, 2008: the Complainant's solicitors emailed the Center explaining that in the Complaint they had used the Respondent's address at Wokingham as the address given in the WHOIS Search Report, not the later address in High Wycombe, Bucks which the Complainant subsequently gave. They offered to provide the Center with a copy of their attendance note of the telephone conversation with the Respondent on September 30, 2008.
December 12, 2008: the Center acknowledged that email.
December 12, 2008: the Respondent emailed Ms. Loxton complaining that he had given her the High Wycombe address but she had chosen not to use that address. He also stated that it was his intention to go to the Press to have this dispute reported in that media.
December 16, 2008: the Respondent emailed the Center asking for the name of a person at the Center with whom he could discuss the matter.
December 16, 2008: the Center gave the Case Manager's name and telephone contact number. 5. Parties' Contentions 5.A The Complainant Identical or Confusingly Similar
5.A.1 The Complainant points to the disputed domain name as including the HARRODS trademark with the prefix “I love”. The Complainant then cites a number of decisions under the Policy wherein the addition of common words to a well-known trademark has been held not to avoid confusing similarity. The Complainant also refers to the cases under the Policy listed in paragraph 4.A.5 above involving the HARRODS trademark, where in each case confusing similarity was found by the Panel. Rights or Legitimate Interests
5.A.2 The Complainant says that the Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy that would evidence rights to or legitimate interests in the disputed domain name.
5.A.3 Further, the Complainant has neither licensed nor otherwise authorized the Respondent to use the HARRODS trademark.
5.A.4 The Complainant also relies on the 10 cases listed in paragraph 4.A.5 above, where none of the Respondents were held to be making bona fide or fair non-commercial use of the disputed domain names. Registered and Used in bad Faith
5.A.5 The Complainant exhibits a print out of the web page to which the disputed domain name resolves. The Complainant asserts that the web page offers links to third party gaming or gambling websites.
5.A.6 The Complainant also refers to the telephone conversation on September 30, 2008 between Ms. Loxton and the Respondent, when Mr. Iorio told Ms. Loxton that in addition to the disputed domain name he had also registered and . The Complainant's solicitors were not able to find but did find that on September 12, 2008 the Respondent (using a different address) had registered .
5.A.7 The Complainant says that during the conversation Mr. Iorio said that he had bought the three domain names to sell the “I love” concept to whichever of Harrods, Selfridges or Harvey Nicholls offered him the best price. The Complainant then refers to the Respondent's offer on October 30, 2008 to sell the disputed domain to the Complainant for £1,000.00: see, paragraph 4.B above.
5.A.8 In the circumstances, the Complainant relies on conduct falling within paragraphs 4(b)(i) and (ii) or 4(b)(iv).
5.A.9 The Complainant says that, given the well-known status of the HARRODS trademark, it is inconceivable that the Respondent could have registered the disputed domain name in good faith. In that respect, the Complainant cites passages from the decisions in WIPO Cases No. D2003-0723:WIPO Case No. D2001-0544:WIPO Case No. D2001-1162 andWIPO Case No. DTV2001-2004, all of which are listed in paragraph 4.A.5 above.
5.A.10 In relation to the Complainant's case under paragraph 4(b)(iv) of the Policy, the decision inWIPO Case No. D2001-0456 is cited. That case is also listed in paragraph 4.A.5 above. 5.B The Respondent
Although no formal Response has been filed, the Respondent's case appears to be contained in his email of October 22, 2008, the full text of which is set out in paragraph 4.B above. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent's 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant clearly has rights in the HARRODS trademark and that trademark is well-known internationally.
6.6 Using the prefix “I love” with the HARRODS trademark does not avoid the disputed domain name being confusingly similar to that trademark. This Panel is fully in agreement with the 10 Decisions listed in paragraph 4.A.5 above, all of which - as in this case - involved domain names incorporating the HARRODS trademark, which were held to be confusing similar to that trademark.
6.7 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 The Respondent is not licensed or otherwise authorized to use the HARRODS trademark. Further, the disputed domain name is confusingly similar to that trademark. Still further, none of the circumstances set out in paragraph 4(c) of the Policy apply in this case.
6.9 The actual use of the disputed domain name asserted in the Complaint (see, paragraph 5.A.5 above) does not appear to be born out by the representative page from the Respondent's website which is exhibited to the Complaint. That page is entirely blank but for the numeral “1” and the word “home”. It does not appear to offer links to a gaming / gambling site.
6.10 Notwithstanding, the proposed use – as explained in the Respondent's October 22, 2008 email – does not demonstrate his rights to or legitimate interest in the disputed domain name. Accordingly, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy. Registered and Used in bad Faith
6.11 The Panel agrees that, given the well-known status of the HARRODS trademark, the Respondent cannot have registered the disputed domain name in good faith.
6.12 Moreover, the proposed use of the disputed domain name – explained in the Respondent's email of October 22, 2008 – is manifestly in bad faith. That is compounded by the Respondent's offer to transfer the disputed domain name to the Complainant for a consideration of £1,000.00, which is far in excess of the out of pocket costs of registering a domain name.
6.13 In the circumstances, the Respondent's activities would appear to fall within the circumstances of paragraphs 4(b)(i) and (ii) of the Policy. Further, as stated, the circumstances set out in paragraph 4(b) of the Policy are not exhaustive of but are only illustrative of evidence of bad faith registration and use. Here, the Respondent either seems to be unaware of the Complainant's rights in the HARRODS trademark or (wrongly) be of the opinion that his registration and proposed use of the disputed domain name is permissible under the Policy or at law.
6.14 The Respondent stated that he was consulting with lawyers – his email of October 23, 2008 – and was given every opportunity by the Complainant's representatives in correspondence to understand the legal consequences of his actions. Notwithstanding, he declined to submit a Response by the due date of November 30, 2008 but has continued to maintain his entitlement to retain the disputed domain name for the purpose set out in his October 22, 2008 email. In the circumstances, it appears that the Respondent has been deliberately blind to the consequences of his actions and the Panel has no hesitation in finding that the Complaint satisfies the two requirements 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, be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: December 19, 2008
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