Harrods Limited v. Robert Boyd

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harrods Limited v Robert Boyd

Case No. D2000-0060

1. THE PARTIES

1.1. The Complainant is Harrods Limited, a private company organised under

the laws of the United Kingdom, with its principal place of business located

in London in the United Kingdom.

1.2. The Respondent is Robert Boyd, of 207 Alberta Street, Dayton, Ohio 45414,

United States of America.

2. THE DOMAIN NAME AND REGISTRAR

2.1. The domain name at issue is <dodialfayed.com>. The domain name is

registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia

20170, United States of America ("NSI").

3. PROCEDURAL HISTORY

3.1. A complaint was submitted electronically by the Complainant to the

World Intellectual Property Organization Arbitration and Mediation Center

("WIPO Center") on February 13, 2000. The signed original, together

with four copies, forwarded by courier under cover of a letter dated February

11, 2000, was received by WIPO Center on February 14, 2000. An acknowledgment

of receipt was sent by WIPO Center to the Complainant on February 15, 2000.

3.2. On February 15, 2000 a request for Registrar verification was transmitted

by WIPO Center to NSI, requesting it to:

3.2.1. Confirm that a copy of the complaint had been sent to it by the

Complainant as required by WIPO Supplemental Rules for Uniform Dispute

Resolution Policy, paragraph 4(a).

3.2.2. Confirm that the domain name at issue is registered with NSI.

3.2.3. Confirm that the person identified as the Respondent is the current

registrant of the domain name.

3.2.4. Provide full contact details, i.e., postal address(es), telephone

number(s), facsimile number(s), email address(es), available in the Registrar’s

WHOIS database for the registrant of the disputed domain name, the technical

contact, the administrative contact and the billing contact for the domain

name.

3.2.5. Confirm that the Uniform Domain Name Dispute Resolution Policy

was in effect at the time of the registration of the domain name.

3.2.6. Indicate the current status of the domain name.

3.3. By email dated February 15, 2000, NSI advised WIPO Center as follows:

3.3.1. NSI had not received a copy of the complaint from the Complainant.

3.3.2. NSI is the Registrar of the domain name registration <dodialfayed.com>.

3.3.3. Robert Boyd is the current registrant of the said domain name.

His relevant information is shown as follows:

Robert Boyd (DODIALFAYED3-DOM)

207 Alberta Street

Dayton, OH 45410

US

Administrative Contact:

Williams, Amy (AW7851) wamy171244@AOL.COM

937 2232191

Technical Contact, Zone Contact:

Verio Hostmaster (VH175-ORG) VerioHostmaster@TABNET.COM

707-256-1999

Fax 707-256-1997

Billing Contact:

Williams, Amy (AW7851) wamy171244@AOL.COM

937 2232191

3.3.4. NSI’s 4.-0 Service Agreement is in effect.

3.3.5. The domain name registration <dodialfayed.com> is in "Active" status.

3.4. NSI provided a copy of its service agreement with the Respondent

and of its Domain Name Dispute Policy. NSI’s service agreement explicitly

informed the Respondent "that this Agreement explains our obligations

to you, and your obligations to us in relation to use of our services".

It further provides:

"8. DOMAIN NAME DISPUTE POLICY. If you reserved or registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference. The current version of the dispute policy may be found at our Web site:

http://www.networksolutions.com/legal/dispute-policy.html."

3.5. The Agreement also states, in pertinent part, that NSI’s domain name dispute

policy may be modified:

"9. DOMAIN NAME DISPUTE POLICY MODIFICATIONS. You agree that we, in our sole discretion, may modify our dispute policy. We will post any such revised policy on our Web site at least thirty (30) calendar days before it becomes effective. You agree that, by maintaining the reservation or registration of your domain name after modifications to the dispute policy becomes effective, you have agreed to these modifications. You acknowledge that if you do not agree to any such modification, you may terminate this Agreement…."

3.6. The version of the dispute policy in effect at the time that the domain

name was registered by the Respondent similarly provided:

"5. Modifications. The registrant hereby acknowledges that Network Solutions may modify or amend this Policy from time to time, and that such changes are binding upon the registrant. Network Solutions will post the revised Policy at http://www.netsol.com/rs/dispute-policy.html at least thirty (30) days before it becomes effective."

3.7. With effect from January 1, 2000, NSI adopted the policy for Uniform

Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned

Names and Numbers ("ICANN"). As can be deduced from the advice

of NSI that the domain name in question is still "active", the

Respondent has never requested that the domain name at issue be deleted

from the domain name database. The Respondent has not sought to terminate

his agreement with NSI. Accordingly, the Respondent is bound by the provisions

of NSI’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

3.8. Having verified that the complaint satisfied the formal requirements

of the Uniform Policy and the Uniform Rules, WIPO Center on February 16,

2000 transmitted by facsimile a notification of Complaint and Commencement

of Administrative Proceedings to the Respondent care of VerioHostmaster,

his technical contact/zone contact. On the same date, email copies of the

above documents were sent to Postmaster@dodialfayed.com, VerioHostmaster@tabnet.com

and wamy171244@aol.com. These addressees were advised that the communications

were for the attention of the Respondent. A copy of the complaint was also

emailed to NSI and ICANN.

3.9. The Panel has independently determined and agrees with the assessment

of WIPO Center that the complaint meets the formal requirements of the Rules

for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on

October 24, 1999 ("the Rules") and the Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

3.10. The Complainant elected to have its complaint resolved by a single

panel member: it has duly paid the amount required of it to WIPO Center.

3.11. The Respondent was advised that a Response to the Complaint was

required within 20 calendar days (i.e., by March 6, 2000). He was also advised

that any Response should be communicated, in accordance with the Rules,

by four sets of hard copy and by email.

3.12. Contrary to these requirements, the Respondent replied to WIPO Center

only by an email dated February 27, 2000. This email emanated from wamy171244@aol.com.

In a brief document, the Respondent claimed that he had searched the US

Patent and Trademark database and "come up with no trademark listed

for Dodi al Fayed or Dodi Fayed or Fayed or Al". He referred to attachments

to his email, but these were unable to be retrieved by WIPO Center.

3.13. WIPO Center on March 2, 2000 emailed the Respondent at the address

from which he had earlier communicated, requesting him to fax the documents

referred to in his email of February 27, 2000 and warning him that the last

date for his response was March 6, 2000. No further response has been received.

3.14. On March 6, 2000, WIPO Center invited the Honourable Sir Ian Barker

QC of Auckland, New Zealand, to serve as sole panelist in the case. It transmitted

to him a statement of acceptance and requested a declaration of impartiality

and independence. The Panelist finds that the Administrative Panel was properly

constituted in accordance with the Rules and the Supplementary Rules.

3.15. On March 7, 2000, the Honourable Sir Ian Barker QC advised his acceptance

and forwarded to WIPO Center his statement of impartiality and independence.

3.16. On March 9, 2000, WIPO Center forwarded to the Honourable Sir Ian

Barker QC by courier the relevant submissions and the record. These were

received by him on March 13, 2000. In terms of Rule 5(b), in the absence

of exceptional circumstances, the Panel is required to forward its decision

by March 22, 2000.

3.17. The language of the administrative proceeding is English, being

the language of the registration agreement.

4. FACTUAL BACKGROUND

4.1. The Complainant has provided evidence of the registration of the following

mark:

Trademark DODI FAYED. It is owned by the Complainant, Harrods Limited, and was registered as a European Community Trademark on January 12, 1999 under EU Trademark Registration No. 648444.

There was no evidence that registration of this trademark had been sought in the United States.

4.2. According to the WHOIS information supplied by the Complainant, Robert

Boyd registered the <dodialfayed.com> domain name on October 15, 1999.

The Respondent is not a licensee of the Complainant, nor is he authorised otherwise

to use the Complainant’s mark.

4.3. After registering the domain name, the Respondent placed the domain name

for sale at an auction Web site (<GreatDomains.com>). A copy of his offer

for sale was downloaded by the Complainant on January 13, 2000. The offer showed

an asking price of US$400,000.

5. PARTIES’ CONTENTIONS

5.1. The Complainant contends that the Respondent registered the domain name <dodialfayed> in a blatant attempt to capitalise unfairly on the fame of and public interest in the late Mr Emad Mohamed al-Fayed, widely known as Dodi. He was the son of Mr Mohamed al-Fayed, the owner of the Complainant. Dodi was a director of the Complainant. He was killed in Paris on 31 August 1997, together with Diana, Princess of Wales, in a car crash that received worldwide publicity. Both before and after his death, Dodi was well-known in many parts of the world. Since his death, there have been widespread investigations into and public debate over the cause of the crash which killed him and Princess Diana. These circumstances, the Complainant alleges, would attract considerable traffic to a Web site using Dodi’s name. The Complainant contends strongly that the Respondent is using the name in bad faith, since there is no suggestion that he had any connection with the late Dodi or is himself known by a similar "nickname".

5.2. The Respondent did not contest the allegations of the Complainant. As noted, his only statement was that a search of the US trademarks and patents database did not come up with this trademark. I am unable to comment on the accuracy of that statement. However, the Complainant owns a European Community trademark. Given that Dodi had close associations with the United Kingdom and other nations in the European Union, one would have thought that a prudent search of patents and trademarks would include a register which recorded trademarks and patents registered in the European Union.

6. DISCUSSION AND FINDINGS

6.1. Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint

on the basis of the statements and documents submitted in accordance with the

policy, these rules and any rules and principles of law that it deems applicable".

6.2. The burden for the Complainant, under paragraph 4(a) of the ICANN Policy,

is to show:

6.2.1. 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.

6.2.2. That the Respondent has no legitimate interests in respect of the domain name.

6.2.3. The domain name has been registered and used in bad faith.

6.3. In my view, the domain name <dodialfayed.com> is confusingly similar

to the Complainant’s trademark, DODI FAYED. The letters "al" reflect

only a more formal version of the name "Dodi Fayed". The commercial

impression is that the domain name is associated with goods and services sponsored

by or affiliated with the late Dodi Fayed or his estate.

6.4. It is also clear that the Respondent has no right or legitimate interest

in respect of the domain name. He has since offered to sell it for a large sum

of money.

6.5. The domain name must not only be registered in bad faith, but must also

be used in bad faith. In determining whether it has been so used, I adopt

with respect the reasoning set out by the learned Panelist, Mr M Scott Donahey,

in World Wrestling Federation Entertainment Inc. v Michael Busman, Case

No. D 99-001. That was a case where the Respondent’s domain name, registered

in Australia, was identical to a service mark and trademark of the Complainant

registered in the United States. The Respondent there had offered to sell the

domain name to the Complainant "for valuable consideration in excess of

out-of-pocket expenses".

6.6. It is legitimate under paragraph 15(a) of the Rules that the Panel should

look at principles of law deemed applicable. Since the Respondent is domiciled

in the United States, and any legal action would have to be taken against him

in that country, it is therefore helpful to look at principles of law set out

in decisions of Courts in the United States.

6.7. The learned Panelist in the World Wrestling case pointed out that

it was clear from the legislative history that ICANN intended proof of use

in bad faith as well as of registration before the streamlined procedure could

be invoked. However, paragraph 4(b)(i) of the ICANN policy document states:

"the following circumstances … shall be evidence of the registration and use of the domain name in bad faith … Circumstances indicating that you have registered or you have 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 for valuable consideration in excess of the documented out-of-pocket costs directly relating to the domain name."

6.8. There is no evidence of any direct approach to the Complainant by the

Respondent. However, the Respondent’s offering to the world the domain name

<dodialfayed> for sale at an asking price of US$400,000 demonstrates the

Complainant as his logical target. The Complainant owns the trademark, DODI

FAYED, and the late Dodi was a director of the Complainant, which is owned by

Dodi’s father, Mr Mohamed al-Fayed. Mr Mohamed al-Fayed has personally been

involved in public tributes to Dodi and Princess Diana, as well as in making

well-publicised efforts to investigate how they were killed. It strains belief

that the Respondent was unaware of these matters.

6.9. Like the Panelist in the World Wrestling case, I note the Court

decisions in the United States, i.e., Panavision International LP v Dennis

Toeppen et al 141 F 3d 1316 (9th Circuit) 1998 and Intermatic

Inc v Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) as supporting the views

that I have taken. In the Panavision case, the Respondent there was characterised

as a "spoiler" who prevented the trademark holder from doing business

on the Internet under its trademark name unless it paid the Respondent’s fee.

7. DECISION

7.1. For the foregoing reasons, the Panel decides:

(a) that the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) the Respondent’s domain name has been registered and is being used in bad faith.

7.2. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires

that the registration of the domain name <dodialfayed.com> be transferred

to the Complainant.

Hon Sir Ian Barker QC

Presiding Panelist

Date: March 16, 2000

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