Harrods Limited v. AB Kohler & Co.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Harrods

Limited v. AB Kohler & Co.

Case No.

D2001-0544

1. The Parties

The complainant is Harrods

Limited of 86/135 Brompton Road, Knightsbridge, London SW1X 7XL, United Kingdom,

represented by Lile H. Deinard, Esq. and Neil E. McDonell, Esq., of Dorsey &

Whitney LLP, New York, United States of America.

The respondent is AB Kohler

& Co. of 150 River Road, Suite 0-4 Montville, New Jersey 07045, United States

of America.

2. The Domain Names

and Registrar

This dispute concerns the

domain names <harrodswatch.com> and <harrodsjewelry.com>.

The registrar is Network

Solutions, Inc., of Herndon, Virginia, United States of America.

3. Procedural History

This is an administrative

proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the

Policy") adopted by the Internet Corporation for Assigned Names and Numbers

("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute

Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules")

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

("the Supplemental Rules") of the WIPO Arbitration and Mediation Center

("the Center").

The Complaint was received

by the Center by email on April 13, 2001, and in hardcopy on April 18, 2001.

The Complaint was acknowledged on April 17, 2001. On April 25, 2001,

registration details were sought from the registrar. Next day the registrar

confirmed that the disputed domain names are registered in the name of the respondent

and that the registrar’s Service Agreement Version 4.0 is in effect. On April

26, 2001, the Center satisfied itself that, save in relation to the Mutual Jurisdiction

paragraph, the Complaint satisfied all formal requirements. On April 27, 2001,

the Center requested from the complainant an amendment to that paragraph. On

May 11, 2001, an amended Complaint was filed by fax and on May 14,

2001, in electronic form. On May 15, 2001, the Center formally notified the

respondent by fax and email (both without attachments) of the Complaint and

of the commencement of this administrative proceeding and sent copies to the

complainant, the registrar and ICANN. On May 28, 2001, the Center sent a hard

copy of the Notification by courier to the respondent and specified the time

for a Response as June 16, 2001.

No Response was filed.

On May 15, 2001, Mr. Andrew Kohler, the administrative, technical and billing

contact of the respondent, stated by email to the Center: "we have released

both names back to Network Solutions and have no claim or ownership to either".

On June 19, 2001, the Center gave formal notice of the respondent’s default.

On June 27, 2001, the Center

notified the parties of the appointment of Alan L. Limbury to serve

as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration

of Impartiality and Independence. That day, the Center transmitted the case

file to the panel and notified the parties of the projected decision date of

July 10, 2001.

The language of the proceeding

was English.

The panel is satisfied

that the amended Complaint was filed in accordance with the requirements of

the Rules and Supplemental Rules; payment was properly made; the panel agrees

with the Center’s assessment concerning the amended Complaint’s compliance with

the formal requirements; the amended Complaint was properly notified to the

respondent in accordance with paragraph 2(a) of the Rules; no Response was filed

and the administrative panel was properly constituted.

4. Factual Background

Since 1849 the complainant

and its predecessors have operated the world-famous Harrods department store

in the Knightsbridge section of London, England, which typically serves approximately

35,000 customers each business day. The HARRODS mark is famous and has acquired

substantial goodwill belonging exclusively to the complainant.

The complainant has used,

registered, or applied to register the mark HARRODS in the United States and

around the world for a very wide range of goods and services, including jewelry,

clocks and watches, including United States Trademark Registration No. 2112096,

dated November 11, 1997; United Kingdom Trade Mark No. 1266809, dated April

8, 1989; Canada Trademark Registration No. TMA436700, dated December 9, 1994;

Australia Registration No. 449791, dated August 6, 1986; New Zealand Registration

No. 269338, dated November 8, 1996; Italy Registration No. 753461, dated

August 17, 1998; and France Registration No. 1465125, dated August 12,

1986.

According to WHOIS information,

the respondent registered <harrodswatch.com> on April 20, 1999, and <harrodsjewelry.com>

on July 27, 1999.

5. Parties’

Contentions

A. Complainant

The disputed domain names

are confusingly similar to the complainant’s famous HARRODS department store

name and many product trademarks. The only difference between the domain names

and the trademarks is the addition of "jewelry" and "watch"

to the Harrods name. The complainant has registered and continues to use the

HARRODS mark for the sale of jewelry and watches throughout the world, including

at its famous Knightsbridge department store. As a result, the commercial impression

conveyed by the disputed domain names is that any associated goods or services,

namely jewelry and watches, are sponsored, endorsed, or affiliated with the

complainant. In fact, the complainant has no association with the respondent,

and has not granted either its permission, authority or consent to the respondent

to register the distinctive HARRODS name and mark as a domain name, in any form

whatsoever.

The respondent cannot demonstrate

any legitimate interests in the domain names. The respondent has not used or

made any demonstrable preparations to use the domain names or a name corresponding

to the domain names in connection with a bona fide offering of goods or services,

nor could it, in view of the fame of the complainant’s HARRODS mark and store.

Nor is the respondent making a legitimate noncommercial or fair use of the domain

names, without intent for commercial gain or to misleadingly divert consumers

or to tarnish the trademarks at issue. In fact, the respondent is merely "squatting"

on the subject names and has made no active use thereof to date.

The respondent has registered

the domain names without any bona fide basis for such registration, in

an attempt to capitalize unfairly on the fame of the Harrods trademarks owned

by the complainant. Paragraph 4(b) of the Policy identifies four circumstances

in which the registration and use of a domain name in bad faith by a registrant

is conclusively established. Previous Panel decisions, however, have explicitly

held that bad faith is not limited to those circumstances identified in the

Policy. Instead, the Panel has held that when a registrant could not use the

name without violating the complainant’s rights under the applicable law, bad

faith exists even if the registrant has done nothing but register the name.

See Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028): "It

would be difficult, perhaps impossible, for Respondent to use the Domain Name

as the name of any business, product or service for which it would be commercially

useful without violating Complainant’s rights".

Similarly, the Panel has

held that if the complainant’s mark is distinctive, as in the case of the HARRODS

mark, bad faith is found if it is unlikely that the registrant would have selected

the domain name without knowing of the reputation of the mark in question. In

Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,

(WIPO Case No. D2000-0163), the Panel held that "‘veuvecliquot.org’ is

so obviously connected with such a well-known product that its very use by someone

with no connection with the product suggests opportunistic bad faith."

See also Empresa Brasileira de Telecomunicacoes S.A. – Embratel v. Kevin

McCarthy (WIPO Case No. D2000-0164): "The ‘passive holding’ of the

domain name <embratel.com> with absolute knowledge of the damages that

such conduct causes to the legitimate owner of EMBRATEL trademark constitutes

a continuous ‘use’ with bad faith of the domain name".

On March 6, 2001, the complainant

sent the respondent a protest letter via certified mail, at the address listed

for the respondent listed in the WHOIS print-out, requesting that the respondent

contact the complainant with regard to the domain names on or before March 12,

2001. To date, the respondent has failed to contact the complainant either to

assert its rights to the domain names or to consent to the transfer of such

domain names.

The Panel has held that

"use" of a domain name in bad faith can include the mere passive holding

of a domain name, as well as any kind of activity through which a domain name

owner derives or attempts to derive economic benefit or commercial gain. See

Guerlain S.A. v. Peikang (WIPO Case No. D2000-0055); The Hamlet Group,

Inc. v. James Lansford (WIPO Case No. D2000-0073); Educational Testing

Service v. NetKorea Co, (WIPO Case No. D2000-0087). Accordingly, the respondent

has both registered and "used" the domain names in bad faith.

B. Respondent

No Response was filed.

6. Discussion and Findings

Failure to file a Response

Failure to file a Response

permits the panel to infer that the respondent does not deny the facts which

the complainant asserts nor the conclusions which the complainant asserts can

be drawn from those facts. 1

Substantive issues

To qualify for cancellation

or transfer, a complainant must prove each element of paragraph 4(a) of the

Policy, namely:

(i) the disputed 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 disputed domain

name has been registered and is being used in bad faith.

Identity or confusing similarity

Essential or virtual identity

is sufficient for the purposes of the Policy. 2

The test of confusing similarity

under the Policy, unlike trademark infringement or unfair competition cases,

is confined to a consideration of the disputed domain name and the trademark

3. Here each disputed domain name incorporates the whole of

the complainant’s famous trademark HARRODS and is followed by a descriptive

word denoting a class of products with which the mark is associated.

The panel finds the disputed

domain names are confusingly similar to the complainant’s trademark. The complainant

has established this element.

Illegitimacy

The trademark HARRODS is

a famous name, used worldwide to denote the goods and services of the complainant.

The panel accepts that it is not reasonably conceivable that the domain names

could have been registered without knowledge of the complainant’s trademark.

The very names themselves are inconsistent with any legitimate interest in the

domain names on the part of the registrant. 4

The complainant has not

authorized the respondent to use its trademark nor to register the disputed

domain names. The name of the respondent is not and does not include any part

of any of the disputed domain names.

In State Farm Mutual

Automobile Insurance Company v. Rocky E. Faw (NAF case FA94971) the respondent

was found to have no legitimate interests in respect of the domain name where

he had not used nor developed the domain name for a legitimate non-commercial

or fair purpose and was not using the domain name in connection with a bona

fide offering of goods or services 5. Having regard to the

fame of the complainant’s mark, there is no use to which the respondent could

legitimately put the disputed domain names.

The panel finds the complainant

has established this element. The respondent has no rights or legitimate interests

in the disputed domain names.

Bad faith registration

and use

A finding of bad faith

may be made where the respondent "knew or should have known" of the

registration and use of the trademark prior to registering the domain name 6.

Here the fame of the trademark is such that the respondent must have known of

it before registering the domain names 7 and cannot use them

without infringing the complainant’s rights 8. The failure

of the respondent to file a response and the absence of any active use 9

also favor a finding of bad faith.

Accordingly the complainant

has established that the disputed domain names were registered and are being

used in bad faith.

7. Decision

Pursuant to Paragraphs

4(i) of the Policy and 15 of the Rules, the panel directs that the domain names

<harrodswatch.com> and <harrodsjewelry.com> be transferred to the

complainant.

Alan L.

Limbury

Sole Panelist

Dated: July

3, 2001

Footnotes:

1. Reuters

Limited v. Global Net 2000, Inc. (WIPO Case No. D2000-0441). See also Hewlett-Packard

Company v. Full System (Case FA 0094637); David G. Cook v. This Domain

is For Sale (Case FA0094957) and Gorstew Jamaica and Unique Vacations,

Inc. v. Travel Concierge (Case FA0094925).

2. See

The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc. (WIPO Case

No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation

v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation

v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102). For a typical

US case see Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489,

497-98 (2d Cir. 2000) (the differences between the trademark "sporty’s"

and the domain name <sportys.com> – specifically, an apostrophe in the

trademark and the addition of .com in the domain name – are "inconsequential,"

such that the domain name is "indistinguishable" from and "certainly

‘confusingly similar’ to the protected mark").

3. AltaVista

Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway, Inc. v.

Pixelera.com, Inc (formerly Gateway Media Productions, Inc.) (WIPO

Case No. D2000-0109).

4. See

Warner Lambert Export Limited v. Mr. Darren Darcy (WIPO Case No. D2000-0453).

5. See

also Leland Stanford Junior University v. Zedlar Transcription & Translation

(NAF case FA94970).

6. SportSoft

Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF case FA94956). Likewise

Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada

Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis

Behring L.L.C. v. Ebiotech.com (NAF case FA95037).

7. Veuve

Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., (WIPO

Case No. D2000-0163); Empresa Brasileira de Telecomunicacoes S.A. – Embratel

v. Kevin McCarthy (WIPO Case No. D2000-0164).

8. See

Cellular One Group v. Paul Brien (WIPO Case No. D2000-28)

9. The

‘use’ requirement does not to require positive action, inaction being within

the concept: Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO

Case No. D2000-0003); Barney’s, Inc. v. BNY Bulletin Board (WIPO

Case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO

Case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO

Case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company

(WIPO Case No. D2000-0194) and Revlon Consumer Products Corporation v. Yoram

Yosef aka Joe Goldman (WIPO Case No. D2000

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