Harrods Limited v. Pete Lormer

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harrods Limited v. Pete Lormer

Case No. D2003-0504

1. The Parties

The Complainant is Harrods Limited of Knightsbridge, London, United Kingdom of Great Britain and Northern Ireland, represented by DLA-Technology Media & Communications of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Pete Lormer of Brooklyn, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <harods.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center

(the "Center") on June 25, 2003. On June 25, 2003,

the Center transmitted by email to eNom a request for registrar verification

in connection with the domain name at issue. On July 2, 2003, eNom

transmitted by email to the Center its verification response confirming that

the Respondent is listed as the registrant and providing the contact details

for the administrative, billing, and technical contact. In response to a notification

by the Center that the Complaint was administratively deficient, the Complainant

filed an amendment to the Complaint on July 22, 2003. The Center verified

that the Complaint together with the amendment to the Complaint satisfied the

formal requirements of the Uniform Domain Name Dispute Resolution Policy (the

"Policy"), 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 July 29, 2003.

In accordance with the Rules, paragraph 5(a), the due date for the Response

was August 18, 2003. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on August 20, 2003.

The Center appointed Leon Trakman as the Sole Panelist in this matter

on September 2, 2003. 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 and Parties’ Contentions

A. Complainant

The Complainant is the owner, for the past 150 years, of goodwill and

reputation in its name, HARRODS and in its related trademarks. Since about 1849,

the Complainant and its predecessors have operated Harrods Department Store

in Knightsbridge, London, England. The Harrods Department Store has been promoted

internationally for many years and includes significant overseas exports and

an international mail order business. The Complainant also has introduced satellite

HARRODS stores at major International Airports such as Frankfurt, London Gatwick,

London Heathrow, Kuala Lumpur, Lisbon and Vienna. The Seibu Department

Store in Hong Kong and various Mitsukoshi Stores across Japan also

offer a selection of Harrods products. In conjunction with associated companies,

its goodwill and reputation includes, among others, Harrods Estates, Harrods Bank

and Harrods Casino Online. The Complainant also has actively promoted

its business on the Internet for some years. In particular, it has actively

operated the Internet website "www.harrods.com" since February 14, 1999.

The Complainant contends that, as a result of the quality of the Complainant’s

goods and services, the volume of its customers, and the extensive advertisement

and promotion of its HARRODS mark, the HARRODS mark is famous, 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. It also contends that, as a direct consequence of its reputation,

it has been the Complainant in a number of domain name disputes; but that it

has always been successful in the retrieval of domain names which have sought

to take unfair advantage of its world famous brand. The Complainant cites in

support the following WIPO decisions: Harrods Limited v. Walter Wieczorek,

WIPO Case No. DTV2001-0024; Harrods

Limited v. AB Kohler & Co., WIPO Case

No. D2001-0544; Harrods Limited v. Harrod’s Closet, WIPO

Case No. D2001-1027; Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162;

and British Telecommunications Plc., v. One in a Million Limited [1998]

4 All ER 476 (CA).

The Complainant contends that it has used, registered or applied to register

the mark HARRODS in many countries around the world for a wide variety of goods

and services. Such goods and services include for example: games and playthings;

gymnastics and sporting articles; clothing, footwear and headgear; traveling

bags; parasols and walking sticks; whips, harness and saddlery; leather goods;

entertainment; sporting and cultural activities; cafeteria services; fashion

consultation; photography; beauty and hairdressing salons; banking and brokerage

services; real estate management and insurance.

The Complainant contends further, that it is the owner of a worldwide trademark

portfolio and the Complainant’s trademarks have become synonymous with a wide

variety of high-quality luxury products and services. The Complainant provides

a list of its registered trademarks, including attachments.

As its first ground, the Complainant contends that the domain name <harods.com>

is confusingly similar to the Complainant’s name HARRODS; and that the only

difference between the Respondent’s domain name and the Complainant’s HARRODS

trademarks is the omission of one "r" from the word "harrods."

According to the Complainant, since the HARRODS mark instantly evokes the famous

Knightsbridge department store and its related products and services, merely

omitting one "r" from the word "harrods" in the domain name

suggests that the website at "www.expedia.com" is connected to the

Complainant.

The Complainant contends further that, when Internet users enter the URL "www.harods.com"

they are taken to the homepage of Expedia at the URL "www.expedia.com."

However, the commercial impression conveyed to those users is that the Respondent’s

services are sponsored, endorsed by or affiliated with the Complainant. The

Complainant adds that the Respondent’s domain name was undoubtedly chosen by

the Respondent in an effort to free-ride off the goodwill associated with the

HARRODS marks, in which the Complainant enjoys exclusive rights. The Complainant

concludes, on this ground, that Respondent’s domain name suggests a false sense

of origin or sponsorship for any associated products, goods or services.

The Complainant’s second ground is that the Respondent has no legitimate interest

in the HARRODS mark. The Complainant alleges that the Respondent cannot demonstrate

any circumstances that would provide evidence of any rights to and legitimate

interests in the domain name for the purpose of satisfying paragraph 4(c)

of the Policy. It alleges that previous respondents against which it was the

Complainant also provided no indication of use of (or demonstrable preparations

to use) the domain name in connection with a bona fide offering of goods

or services in accordance with paragraph 4(c)(i) of the Policy. The Complainant

argues, as well, that there is no information on this website to suggest a legitimate

right to use the name "Harods."

The Complainant draws attention to a pattern of conduct. It alleges that previous

registrants failed to respond to the letters sent by the Complainant’s solicitors;

and that each previous registrant engaged in a pattern of conduct whereby upon

receipt of such letters, the domain name was immediately transferred/sold. The

Complainant maintains, in light of this, that alerting the Respondent on this

occasion through correspondence would repeat the cycle of transfer/sale, and

by inference, defeating the purpose of the Complaint. As a result, the Complainant’s

solicitors did not contact the Respondent prior to filing this Complaint. The

Complainant provides evidence if this allegation by indicating that the Respondent’s

contact details set out in the WHOIS report are identical to those of the first

registrant of the domain name.

The Complainant concludes that the Respondent cannot make a bona fide

offering of goods or services in view of the Complainant and the Complainant’s

trademarks; that the disputed domain name could not have been chosen for any

reason other than because of its association with the Complainant’s trademarks;

and that the purpose of the registration was to attract, for commercial gain,

Internet users to the Respondent’s website.

The Complainant’s third ground is that the domain name in dispute was registered

and is being used in bad faith. In particular, the Respondent intentionally

attempted to attract for commercial gain Internet users to its website or other

on-line location by creating a likelihood of confusion with the Complainant’s

marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s

website or location or of a product or service on the website or location (paragraph 4(b)(iv)

of the Policy). The Complainant maintains that the confusion caused by the Respondent

is described as "initial interest confusion" arising from the deliberate

diversion of Internet users who intend to access the Complainant's website and

by the Respondent taking unfair advantage of the Complainant’s goodwill.

The Complainant draws attention to Paragraph 4(b) of the Policy which

sets out a non-exclusive list of factors that evidence bad faith; and maintains

further, that previous WIPO Panel decisions have explicitly held that bad faith

is not limited to the factors set out in that Paragraph. In particular, where

a respondent cannot use a domain name without violating a complainant’s rights

under the applicable law, it is accepted that bad faith exists even if the Respondent

has done nothing but register the domain name. The Complainant maintains further

that the use of misspellings alone are sufficient to prove bad faith under paragraph 4(b)(iv)

of the Policy. The Complainant alleges that, if its mark is distinctive, bad

faith is found if it is unlikely that the Respondent would have selected the

domain name without knowing of this reputation.

The Complainant concludes that the Respondent has registered the domain name

in bad faith, that this constitutes bad faith, that the Respondent has no rights

or legitimate interests in the disputed domain name and that the domain name

is confusingly similar to trademarks in which the Complainant has rights.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

5. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <harods.com> is confusingly similar to the Complainant’s

trademarks. There is only one difference in spelling between the Respondent’s

domain name and the Complainant’s HARRODS trademarks, namely, the omission of

one "r" from "harrods." Given that the Complainant is internationally

known as HARRODS, the omission of one "r" from "harrods"

in the disputed domain name, the use of the domain name in dispute is likely

to create the distinct impression on Internet users that the website at "www.expedia.com"

is connected to the HARRODS brand. Internet users are also likely to assume

that Respondent’s services are identical to, synonymous with, affiliated to,

or otherwise identified with the Complainant. The Panel is persuaded by a plethora

of prior cases that the marginal variation of a well known brand through misspelling

invites typo squatting by which respondents use confusingly similar domain names

to famous trademarks. See eg. Wachiova Corporation v. Peter Carrington,

WIPO Case No. D2002-0775; Xerox Corp.

v. Stonybrook Investments, Ltd., WIPO

Case No. D2001-0380; The Toronto-Dominion Bank v. Boris Karpachev,

WIPO Case No. D2000-1571; Veuve

Clicquot Ponsardin, Maison Fondée en 1772 v. Herreveld, WIPO

Case No. D2000-0776; Reuters Limited v. Global Net 2000, Inc., WIPO

Case No. D2000-0441; Arthur Guinness Son & Co (Dublin) Limited v.

Dean Macesic, WIPO Case No. D2000-1698;

Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a

Country Wallk a/k/a Cupcake Party, WIPO

Case D2000-0330; Oxygen Media, LLC v. Primary Source, WIPO

Case D2000-0362; Nicole Kidman v. John Zuccarini, a/b/a Cupcake Party,

WIPO Case No. D2000-1415; Hewlett-Packard

Co .v. Cupcake City, File No. FA000200093562; The Nasdaq Stock Market

Inc v. Shawn Cain d/b/a Star Inc., WIPO Case

No. D2002-1125; Ansell Healthcare Products Inc. v. Australian Therapeutics

Supplies Pty Ltd., WIPO Case No.

D2001-0110, Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., WIPO Case

No. D2001-0075 and Arthur Guinness Son & Co. (Dublin) Ltd v. Steel

Vertigogo WIPO Case No. D2001-0020.

The Panel also notes domain name disputes in which the Complainant’s marks

have been "targeted" for use by confusingly similar domain names,

including misspellings and that HARRODS have been a complainant in some of these

cases. See e.g., Harrods Limited v. Peter Pierre, WIPO

Case No. D2001-0456; Harrods Limited v. Vineet Singh, WIPO

Case No. D2001-1162; Harrods Limited v. Ronald Krupinski, WIPO

Case No. D2002-0642; Harrods Ltd. v. Dijitaldjs, WIPO

Case No. D2001-1163.

B. Rights or Legitimate Interests

The Respondent has no legitimate interests in the domain name sufficient to

satisfy the purpose of paragraph 4(c) of the Policy. The domain

name is not being used in connection with a bona fide offering of goods

or services in compliance with paragraph 4(c)(i) of the Policy. The website

to which the domain name resolves does not contain any information that reasonably

demonstrates any legitimate right to use the name "Harods"; and the

domain name bears no reasonable relationship to the business of the Respondent.

The registration of the domain name to direct Internet traffic to the Respondent’s

website also likely creates the distinct impression in the minds of those users

that there is an association between the Respondent and the Complainant’s established

brand. See e.g. Reuters Limited v. Global Net 2000 Inc., WIPO

Case No. D2000-0441.

It is evident, on the facts that the Respondent is not, nor has been, historically

associated with the name "Harods" as set out in paragraph 4(c)(ii)

of the Policy. It is also evident that the choice of that name bears no reasonable

relationship to either the name of the registrant, or to the registrant’s business.

The Respondent’s illegitimate use of the domain name is also linked to a prior

pattern of illegitimate conduct. The Complainant provides evidence that previous

registrants of confusingly similar domain names to its mark engaged in a comparable

course of dealings. On receipt of a letter of complaint from the Complainant’s

solicitors, the domain name was immediately transferred/sold to a third party.

The Complainant indicates that it failed to contact the Respondent prior to

filing the instant complaint, specifically to avoid a repeat transfer/sale in

the instant case. In further justifying its failure to notify the Respondent,

the Complainant establishes that the Respondent’s contact details as set out

in the WHOIS report are identical to those of the first registrant of the domain

name, Webinajiffy, as set out in the WHOIS report dated August 29, 2002.

While reluctant to encourage complainants generally not to notify Respondents

of an allegedly infringing domain name, the Panel accepts the explanation provided

in this case on its particular facts. In particular, where there is evidence

of a consistent pattern of conduct by which a respondent transfers or sells

a domain name on being notified by a prospective complainant that the name is

in dispute, and that transfer or sale renders the cancellation or transfer to

the Complainant of that domain name impossible or impracticable, the presumption

that a complainant is required ordinarily to notify the Respondent may be rebutted.

This presumption should not likely be invoked in order to ensure that prospective

respondents are able to answer allegations against them, and to avoid them being

subject to summary domain name determinations when they have not received a

prior opportunity to respond to those allegations.

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

The Panel concludes that the domain name in dispute was registered and used

in bad faith. Using negative reasoning, that domain name could not reasonably

have been chosen for any reason other than in order to use the Complainant’s

trademarks to attract, for commercial gain, Internet users to the Respondent’s

website. Doing so constitutes, not only an illegitimate use of the disputed

domain name, but also bad faith use in this case. For the Panel to hold otherwise

would be to undermine Complainant’s brand by misleadingly identifying its brand

with the Respondent. This relationship between illegitimate use of a domain

name and bad faith is evident in a series of WIPO decisions, including those

involving the HARRODS name. See e.g. Société des Bains de Mer

et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO

Case No. D2000-1319; Xerox Corp v. Stonybrook Investments, Ltd.,

WIPO Case No. D2001-0380; Harrods Ltd.

v. Dijitaldjs, WIPO Case No. D2001-1163;

Harrods Limited v. AB Kohler & Co., WIPO

Case No. D2001-0544; Harrods Limited v. Vineet Singh, WIPO

Case No. D2001-1162; Arthur Guinness Son & Co (Dublin) Limited v.

Dejan Macesic, WIPO Case No. D2000-1698;

Wachovia Corporation v. Peter Carrington, WIPO

Case No. D2002-0775; e-Duction, Inc. v. Zuccarini, WIPO

Case No. D2000-1369; The Nasdaq Stock Market Inc v. Shawn Cain d/b/a

Star Inc, WIPO Case No. D2002-1125;

Pig Improvement Co. v. Platinum Net, Inc., WIPO

Case No. D2000-1594.

The Respondent’s bad faith arises, too, from a deliberate intention to create

a false sense of origin or sponsorship for the Respondent’s products, goods

and services. Moreover, the Respondent intentionally attempted to attract for

commercial gain, Internet users to its website or other on-line location by

creating a likelihood of confusion among Internet users between the Complainant’s

marks and the source, sponsorship, affiliation or endorsement of the Respondent’s

website or location, or of a product or service on the website or location.

The Respondent intended to free-in bad faith, on the goodwill of the

HARRODS marks in which the Complainant enjoys exclusive rights. In engaging

in this practice, the Respondent’s action is contrary to paragraph 4(b)(iv)

of the Policy.

The Respondent’s bad faith is also inextricably linked to the Respondent’s

initiating conduct in registering this domain name with the deliberate intention

of causing ‘initial interest confusion’ between the Complainant’s famous marks

and the Respondent’s services and products. The Panel acknowledges a prior Panel

determination that such "deliberate creation of initial interest confusion

and the consequent diversion of Internet traffic is sufficient to establish

bad faith on the Respondent’s part." See e.g. Sony Ericsson Mobile Communications

International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v.

Party Night Inc., WIPO Case No. D2002-1128.

The Respondent has acted in bad faith in the instant case in consequence of

reasonable inferences arising from registering that domain name in bad faith,

as distinct from the requirement that it use that name subsequent to registration.

Paragraph 4(b) of the Policy sets out a non-exclusive list of factors evidencing

bad faith, but allows for the development of further factors. Moreover, prior

WIPO panels have clearly recognized additional factors in determining such bad

faith, not limited to those listed in paragraph 4(b) of the Policy. See

e.g. Harrods Ltd v. Dijitaldjs, WIPO

Case No. D2001-1163; Alta Vista Company v. Saeid Yomtobian,

WIPO Case No. D2000-0937; Veuve Clicquot

Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO

Case No. D2000-0163; Microsoft Corporation v. Microsof.com aka Tarek

Ahmed, WIPO Case No. D2000-0548.

The extension of such bad faith to include the current case, beyond those factors

listed in Paragraph 4(b) of the Policy is clearly requisite. Negatively

phrased, the Respondent has exercised bad faith by the very act of not being

reasonably able to use that name without having the effect of violating the

Complainant’s name and trademarks. Were the Respondent to do nothing beyond

register the name, that act of registration itself would constitute bad faith

because a bad faith use is an unavoidable inference, indeed consequence, of

the act of registration itself. See further, The Nasdaq Stock Market Inc.

v. Shawn Cain d/b/a Star Inc., WIPO Case

No. D2002-1125; Playboy Int’l v. SAND WebNames-For Sale, WIPO

Case No. D2001-0094; General Electric Co. v. Fisher Zvieli a/k/a Zvieli

Fisher, WIPO Case No. D2000-0377;

Dell Computer Corporation v. MTOC.A. and Diabetes Education Long Life,

WIPO Case No. D2002-0363; Reuters

Limited v. Global Net 2000 Inc., WIPO

Case No. D2000-0441; Wachovia Corporation v. Peter Carrington, WIPO

Case No. D2002-0775; Harrods Limited v. Walter Wieczorek, WIPO

Case No. DTV2001-0024; Cellular One Group v. Paul Brien, WIPO

Case No. D2000-0028; Xerox Corp v. Stonybrook Investments Ltd., WIPO

Case No. D2001-0380; Harrods Limited v. Walter Trautner, WIPO

Case No. D2001-1164; Harrods Limited v. Peter Pierre, WIPO

Case No. D2001-0456; Harrods Ltd., v. Dijitaldjs, WIPO

Case No. D2001-1163; Harrods Limited v. Coupon Corporation Inc.,

WIPO Case No. D2003-0105.

The Panel qualifies this holding immediately above in a key respect. Typo squatting

does not constitute per se bad faith. However, typo squatting, as was

clearly the case here, is strong evidence of bad faith, particularly where the

act of registration so enables the Respondent to use that registration at the

expense of the Complainant’s good will and reputation. Once a complainant has

adduced such evidence, as the Complainant clearly has done in the instant case,

only the most formidable evidence to the contrary would rebut the strong presumption

of bad faith use by the Respondent. Such a rebuttal would need to counter the

ordinary inference that, in registering a domain name that so entices Internet

users to the Respondent’s site, the Respondent is relying in bad faith on the

Internet user’s recognition of the Complainant’s well-known marks so as to promote

the Respondent’s services and products. There is no contrary evidence in the

current case that reasonably infers that the Respondent was acting in good faith

in the instant case.

Accordingly, the Panel holds that the Respondent has registered and used the

disputed domain name in bad faith.

6. 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, <harods.com>

be transferred to the Complainant.

Leon Trakman

Sole Panelist

Dated: September 4, 2003

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