WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Harrods Limited v. eMerchantClub, LLC Case No. D2008-1686 1. The Parties
The Complainant is Harrods Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “U.K.”), represented by Burges Salmon LLP, United Kingdom.
The Respondent is eMerchantClub LLC, of Simi Valley, California, United States of America, (“United States” or “U.S.”) 2. The Domain Name and Registrar
The disputed domain name is registered with R, 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 R, Inc. a request for registrar verification in connection with the disputed domain name. On November 10, 2008, R, 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 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 2, 2008.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 16, 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
The Complainant and its predecessors have operated the famous HARRODS Department Store in London, U.K. since 1849, providing over one million products and 50 separate services. The Complainant's store serves approximately 35,000 customers each day and has itself become a tourist attraction in England. International sales and promotions have occurred through export sales and international mail order business. The HARRODS Department Store has been promoted internationally and has operated satellite stores under the HARRODS name in major international airports, such as London Gatwick, London Heathrow, Kuala Lumpur and Lisbon.
The Complainant has operated a website at since February 14, 1999. The Complainant's website includes information on the Complainant's London store and the products available.
The Complainant is the registered owner of a portfolio of worldwide trade marks including the following:
(a) U.K. Trade Mark No. 2245927 registered on March 9, 2001 for the mark HARRODS for services in Class 35;
(b) U.K. Trade Mark No. 1305593 registered on March 19, 1993 for the mark HARRODS for services in Classes 36, 37, 39, 40, 41 and 42;
(c) Community Trade Mark No. 62414 registered on October 23, 1998 for the device mark HARRODS for goods and services in Class 1 to 42;
(d) U.S. Trade Mark No. 1354693 registered on August 13, 1985 for the device mark HARRODS for services in Class 42 including retail mail order services of consumer goods;
(e) US Trade Mark No. 3250706 registered on June 12, 2007 for the mark HARRODS for services in Class 35 including mail order services and on-line retail store services.
The Complainant has been victim of a number of domain name disputes and has been successful in the retrieval of domain names which seek to take unfair advantage of its brand.
The Respondent registered the disputed domain name on January 23, 2008. At the date of the Complaint, the Respondent was operating a website as an online retailer and was selling items for the home through an online catalog. 5. Parties' Contentions A. Complainant
(a) Identical or Confusingly Similar
The Complainant alleges that the domain name is confusingly similar to the Complainant's trademarks.
First of all, the Respondent's domain name incorporates the Complainant's registered trademark HARRODS.
The only difference between the disputed domain name and the Complainant's trademark is the addition of the composite word “homedecor”.
The Complainant argues that this word reflects the types of goods and services offered by 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 Complainant's trademarks.
The Complainant concludes, with references to a number of prior UDRP decisions, that the disputed domain name incorporates the Complainant's trademark in its entirety and a non-distinctive word, so that it is confusingly similar to the Complainant's trademark.
(b) Rights or Legitimate Interests
The Complainant contends that the Respondent cannot demonstrate any circumstances that would evidence rights to or legitimate interests in the disputed domain name.
The Complainant submits that there is nothing to suggest that the Respondent or its directors and employees have been commonly known by the name “Harrods”.
The Complainant contends, citing prior UDRP decisions, that the Respondent must have been aware of the Complainant at the time of registration in view of its fame.
Finally, the Complainant reports that it has repeatedly attempted to contact the Respondent by sending emails to several addresses provided by the Respondent between February and October 2008, but that they have all been returned with email failure notification messages.
(c) Registered and Used in Bad Faith
The Complainant states that when a registrant could not use a domain name without violating a trademark holder's right under applicable law, bad faith exists even if the registrant has done nothing but register the name.
The Complainant contends that the more distinctive the trademark is, the more the Respondent has to prove its absence of knowledge of the trademark's fame. However, the Complainant contends, also citing prior UDRP decisions, that bad faith must be found because of the sale of goods under the HARRODS name on the website operated by the Respondent at the domain name , which dismisses the fact that the Respondent was unaware of the Complainant's reputation.
On these bases, the Complainant requests that the contested domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence of its rights to the HARRODS trademark for a wide variety of goods and services. The Panel considers the HARRODS trademark to be a well-known mark which has been able to build a worldwide reputation.
Confirmation of the reputation of the Complainant and the HARRODS mark may be found in many previous UDRP decisions (See, for example Harrods Limited v. Josh Crutchley,WIPO Case No. D2007-1848; Harrods Limited v. Harrods University of Applied n Allied Sciences,WIPO Case No. D2006-0803).
The Complainant contends, with references to a number of prior UDRP decisions, that the disputed domain name merely adds two non-distinctive words to the HARRODS trademark and has to be considered as confusingly similar.
In that regard, the only difference between the Respondent's domain name and the Complainant's HARRODS trademark is the addition of two generic terms, “home” and “décor”. Since these terms describe a type of goods and services which the Complainant offers, the addition of these words to the Complainant's trademark does not distinguish the domain name from the mark in any meaningful way.
Previous UDRP decisions involving Harrods have found confusing similarity where the domain name consisted of HARRODS plus non-distinctive words (See, for example, Harrods Limited v. Focus,WIPO Case No. D2008-1425 (for ); Harrods Limited v. Peter Pierre,WIPO Case No. D2001-0456 (for and ) and Harrods Limited v. Harrod's Closet,WIPO Case No. D2001-1027 (for ).
Moreover, the distinctive element HARRODS has been used in its entirety, and has been positioned as the first element of the domain name, thereby increasing the likelihood of confusion. Such a test of confusion must be especially strict when complainant is the owner of a trademark related to a vast variety of goods and services.
As a consequence, the Panel considers that the disputed domain name is confusingly similar to the HARRODS trademarks owned by the Complainant. The Panel therefore finds that the Complainant has satisfied the first requirement of Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the disputed domain name.
Moreover, there is no evidence that the Respondent is commonly known by this domain name. The Respondent's website was registered under the name eMerchantClub LLC, which is also the name of the identified administrative contact.
The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use its HARRODS trademark, and that it cannot be said that the Respondent is using the domain name in connection with a bona fide offering of goods or services.
In consequence, the Panel finds that Respondent has no right or legitimate interest in the domain name and that that the Complainant has proven the condition set out by the Paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel has recognized that the Complainant's trademark has achieved the status of a well-known mark. Accordingly, it is extremely difficult for the Panel to believe that the Respondent was not aware of the Complainant's famous HARRODS trademark.
In the absence of any explanations to the contrary by the Respondent, the Panel must deduce that, in view of the fame and reputation of the HARRODS brand name and the several trademark registrations, in particular in the United States (the Respondent's home country), the Respondent must have known of these registrations when registering the disputed domain name.
The Panel also noticed that the Respondent is using the HARRODS name on the homepage of the disputed domain name in a commercial way. Consequently, the Panel considers that it creates a false appearance that the Complainant has registered or has permitted the registration and use of the disputed domain name or at least the Complainant does support or endorses its use by the Respondent.
The Panel finds that this use of the disputed domain name should be analysed as an intention of the Respondent to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Panel also finds that in several UDRP decisions, panels have found that given the Complainant's trademark's reputation, its use by someone with no connection with the Complainant suggests opportunistic bad faith (See, for example, Harrods Limited v. Walter Wieczorek,WIPO Case No. DTV2001-0024; Xerox Corp. v. Stonybrook Investments, Ltd,WIPO Case No. D2001-0380; Harrods Limited v. Peter Pierre,WIPO Case No. D2001-0456 and Harrods Limited v. Steve Bohn,WIPO Case No. D2003-0736).
These circumstances justify the conclusion that both the registration and the use of the disputed domain name have been made in bad faith.
The Panel, therefore, concludes that there is sufficient evidence that Respondent's registration and use of the domain name have been made in bad faith, fulfilling the requirements set out by 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.
Christiane Féral-Schuhl
Sole Panelist
Dated: December 30, 2008
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