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Harrods Limited v. Virtual World Internet

WIPO Case No. D2002-0396

Outcome
Transfer
Domain names
virtualharrods.com
Complainant
Harrods Limited
Respondent
Virtual World Internet
Panelist
Thorne
Decided
09 Jul 2002
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0396.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Harrods

Limited v. Virtual World Internet

Case No

D2002-0396

1. The Parties

The Complainant is Harrods

Limited of 87-135 Brompton Road, Knightsbridge, London SW1X 7XL, United Kingdom.

The Complainant is represented by Messrs Hammond Suddards Edge of 7 Devonshire

Square, Cutlers Gardens, London EC2M 4YH, United Kingdom.

The Respondent is Virtual

World Internet, a company incorporated in England whose registered office is

at Berkeley Square House, Berkeley Square, London S1X 6EA, United Kingdom. The

Respondent is not represented and indeed has not filed a Response to the Complaint.

2. The Domain Name and

Registrar

The domain name in dispute

is <virtualharrods.com>. The Registrar of the domain name is Network Solutions

Inc., of 505 Huntmar Park Drive, Herndon, Virginia VA 20170, United States of

America.

3. Procedural

History

The Complaint was received

by the Center on April 29, 2002. A request for verification of the domain name

was made to the Registrar Network Solutions Inc. on April 30, 2002. A response

was received by email from Network Solutions Inc. on May 3, 2002 verifying the

registrant of the domain name as the Respondent Virtual World Internet with

an administrative contact of Fortune Cooke's, The Lightwell, 12-16 Laystall

Street, London.

Notification of the Complaint

and commencement of the administrative proceedings was given by the Center to

the Respondent on May 8, 2002 by post, fax and by email. No Response having

been received from the Respondent, Notification of Respondent's Default was

given by email to the Respondent on May 29, 2002.

No further communication

having been received from the Respondent an administrative panel was appointed

on June 10, 2002 consisting of a sole panelist Mr. Clive Thorne with a projected

decision date of June 24, 2002.

The Panelist has submitted

a statement of acceptance and declaration of impartiality and independence.

The Panel understands that the appropriate fees have been paid by the Complainant.

The language of the administrative proceeding is English.

4. Factual Background

The Complainant trades

as the world famous Harrods Department Store in the Knightsbridge area of London.

It has done so for more than 150 years since about 1849. The Complainant's flagship

store is unique and highly prestigious. It typically serves approximately 35,000

customers each business day and has become a "mandatory" stop for tourists visiting

England. The Complainant asserts that its trade marks "Harrods" have become

synonymous with a wide variety of high quality luxury products and services.

At Annex D to the Complaint

the Complainant exhibits copies of trade mark register print outs and certificates.

In particular the Complainant refers to the following trade mark registrations:-

(i) US trade mark registration

number 1354693 for the mark "HARRODS" in class 42.

(ii) US trade mark application

number 15.751757 for the mark "harrodsonline" in class 35.

(iii) UK trade mark

number 1266810 for the mark "HARRODS" in class 16.

(iv) UK trade mark number

1274160 for the mark "HARRODS" in class 9.

(v) UK trade mark number

2245927 for the mark "HARRODS" for services in class 35 referring inter alia

to "online media".

(vi) European Community

trade mark number 62414 for the mark "HARRODS" in class 42.

The Complainant also relies

upon two domain names <harrods.com> and <harrodsonline.com> which

provide access to websites that offer Harrods merchandise for sale in the UK.

The Complainant is apparently currently developing the <harrodsonline.com>

site in order to sells Harrods merchandise in other parts of the world. The

Complainant exhibits at Annex E to the Complaint a copy of the WHOIS information

for the sites.

The Complainant asserts

that as a result of the quality of its goods and services, the tremendous volume

of its customers and extensive advertisement and promotion of the mark "Harrods"

the mark has become famous and has acquired substantial goodwill belonging exclusively

to the Complainant and has come to be and is recognized as an indicia of origin

exclusively identified with the Complainant.

The Complainant at paragraph

16 of the Complaint relies upon a number of previous Panel decisions as support

for the proposition that the mark "HARRODS" is a famous mark. The present panel

does not find previous decisions particularly helpful since they undoubtedly

turned upon the evidence before the deciding Panel. Nevertheless given the evidence

of substantial goodwill and trading activity adduced by the Complainant the

present panel is prepared to accept that the mark is famous. It is also on the

evidence adduced by the Complainant prepared to find that the Complainant owns

the trade mark rights referred to above.

No Response having been

filed by the Respondent the Panel has no alternative but to consider the Complainant's

submissions with regard to the Respondent's activities.

Having considered the evidence

put before it with regard to ownership of the domain name in dispute set out

in Annex A to the Complaint and the Registrar's verification the Panel finds

that the domain name <virtualharrods.com> is registered by the Respondent.

The Panel also finds, having considered Annex G to the Complaint ,that the Respondent

has registered other domain names which incorporate other "famous" trading names

including; <virtualdell.com>, <virtualrbsnatwest.com>, <virtualbmw.com>,

<virtualmarriotthotels.com>, <virtualjal.com>, <virtualfour-seasons.com>,

<virtualual.com> and <virtualsaa.com>.

5. The Complainant’s

Contentions

In order to succeed in

its request for an order to transfer the domain names to the Complainant the

Complainant has the burden of proof of ensuring that each of the elements set

out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the

Policy") are present. These are as follows:-

(i) The Respondent's

domain names are identical or confusingly similar to a trade mark or service

mark in which the Complainant has rights;

(ii) The Respondent

has no rights or legitimate interest in respect of the domain names;

(iii) The Respondent's

domain names have been registered and are being used in bad faith.

The Panel proceeds to deal

with each of these in turn.

(i) The Respondent's

domain names are identical or confusingly similar to a trade mark or service

mark in which the Complainant has rights

The Panel has already found

that the Complainant has registered trade mark rights in the mark "HARRODS"

as well as a substantial trading goodwill in the mark.

In this case the only difference

between the Respondent's chosen domain name and the Complainant's trade mark

"HARRODS" is the addition of the word "virtual" to the Harrods name. The Complainant

relies on the fact that the mark "HARRODS" instantly invokes the Knightsbridge

department store whilst adding "virtual" merely suggests that internet users

using the website are able to purchase the Harrods and goods and services from

home online. In other words it conveys the idea that the Complainant's famous

department store is online and/or the Complainant's goods and services are available

on the internet. The impression given to web users is that the Respondent's

domain name and the Complainant's marks are one and the same, that is, that

any associated goods or services are sponsored endorsed or affiliated with the

Complainant.

The Panel, in the absence

of any submission by the Respondent accepts the Complainant's submission and

finds for the Complainant under this head.

(ii) The Respondent

has no rights or legitimate interest in respect of the domain name

The Complainant submits

that the Respondent cannot demonstrate any legitimate interest in the domain

name. In support of this submission it relies on the fact that there is no evidence

that the Respondent has used or made any "demonstrable preparations to use the

domain name or a name corresponding to the domain name in connection with a

bona fide offering of goods or services, nor could he, in view of the fame of

the Complainant's Harrods trade marks name and store". The Complainant asserts

that the Respondent is merely "squatting" on the subject name and has made no

active use to date.

In the absence of any counter

submission by the Respondent the Panel accepts the Complainant's submission

on the basis that there is no evidence before it demonstrating any legitimate

interest in the domain name on the part of the Respondent.

(iii) The Respondent's

domain names have been registered and are being used in bad faith.

The Complainant submits

that the Respondent's registration of numerous domain names using the prefix

"virtual" demonstrates a bad faith pattern of engaging in a pattern of registering

domain names featuring the well known trade marks of others, for example "Dell",

"BMW", "RBS NatWest" and "Marriott Hotels". This leads to the conclusion that

the Respondent is in the business of acquiring domain names that incorporate

well known marks leading to an inference that it has no right or intention to

put these to a legitimate use.

It follows, according to

the Complainant, that the Respondent has registered the domain name in a blatant

attempt to capitalize unfairly on the fame of the trade mark Harrods.

Again in the absence of

any counter evidence from the Respondent the Panel is prepared to accept this

evidence as evidence of bad faith on the part of the Respondent.

It follows that the Complainant

has succeeded in its complaint.

6. Decision

The Complainant requests

that the Panel issues a decision that the contested domain name be transferred

to the Complainant. The Panel having found for the Complainant orders that the

domain name in dispute, <virtualharrods.com> be transferred from the Respondent

to the Complainant.

Clive Duncan

Thorne

Sole Panelist

Dated: June

24, 2002

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