WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Harrods Limited v. , star qatar Case No. D2008-1794 1. The Parties
The Complainant is Harrods Limited, of London, United Kingdom of Great Britain and Northern Ireland, represented by Burges Salmon LLP, United Kingdom.
The Respondent is , the Kingdom of Saudi Arabia. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2008. On November 24, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On November 26, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 December 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 22, 2008.
The Center appointed Edoardo Fano as the sole panelist in this matter on January 8, 2009. 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent's default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent's response.
The language of the proceeding is English, being the language of the Registration Agreement. 4. Factual Background
The Complainant is Harrods Limited, owner of one of the world's most famous department stores, providing over one million goods and 50 separate services.
Among others, the Complainant is the owner of the following trademark registrations:
- United Kingdom Trademark Registration for HARRODS No. 2245927, registered in 2001;
- Community Trademark Registration for HARRODS No. 61697, registered in 2001, and claiming several seniorities;
- United States of America Trademark Registration for HARRODS No. 1354693, registered in 1985.
The Complainant provided evidence in support of the above-mentioned trademark registrations.
The Respondent's domain name was registered on September 26, 2008. As the date of this decision it, it pointed to a page with two hyperlinks, the first of them leading nowhere and the second one to an “under construction” webpage. 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to its trademark HARRODS, with the mere addition of a hyphen and the letters “qtr”, that does not change the fact that the Complainant's trademark is incorporated in full in the disputed domain name.
Moreover, the Respondent has no rights or legitimate interests in respect of the disputed domain name since it is neither a licensee of the Complainant nor otherwise allowed to use the trademark HARRODS and the Respondent is not commonly known by the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent has registered, used, and continues to use the disputed domain name in bad faith.
In fact, “the fame of the trademark is such that the Respondent could not have registered the domain name unknowingly of the Complainant's trademark rights and cannot use the domain name without infring the Complainant's mark”, as stated by the relevant Panel in a previous case also involving the Complainant's trademark HARRODS (Harrods Limited v. Steve Bohn,WIPO Case No. D2003-0736) B. Respondent
The Respondent did not reply to the Complainant's contentions and is in default: no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, facts asserted by the complainant may be taken as true and reasonable inferences by the panel, in accordance with paragraph 14(b) of the Rules (see also Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080; AltaVista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trademark 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 domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As far as the first of these tests is concerned, the Panel finds that the Complainant is the owner of the trademark HARRODS both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark HARRODS.
Regarding the addition of the hyphen followed by the term “qtr” (probably standing for Qatar, which is part of the Respondent's name), the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037, Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the term “qtr” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant's trademark.
It is also well accepted that a top-level domain, in this case “.com”, may be ignored when assessing identity of mark and domain name (see, e.g., VAT Holding AG v. ,WIPO Case No. D2000-0607).
The Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no right or legitimate interest in the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of proof to the Respondent to demonstrate that it has a right or legitimate interest in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in using the disputed domain name.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, 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:
(i) circumstances indicating that the Respondent has registered or 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant's trademark has been already established and the Panel finds that the Respondent knew or must have known that the disputed domain name was confusingly similar to a trademark of a third party.
As regards the use in bad faith of the disputed domain name, the Panel considers valid the Complainant's allegation that bad faith exists even if the Respondent has done nothing but register the disputed domain (so-called “passive holding”, as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name in bad faith. 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, namely to Harrods Limited.
Edoardo Fano
Sole Panelist
Dated: January 21, 2009
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