Harrods Ltd -v- DJV Associates [2004] DRS 1758 (5 July 2004)

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The Complaint was lodged with Nominet on 13 May 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on 18 May 2004 and informed the Respondent that they had 15 days within to lodge a Response. The Respondent failed to respond. Mediation not being possible in those circumstances, Nominet so informed the Complainant and on 25 June 2004 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

On 2 July 2004, David King, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties, which might appear to call into question his independence and/or impartiality.

The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with Paragraph 5a of the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service (“the Procedure”).

Paragraph 15b of the Procedure provides, inter alia, that “if in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint.”

Paragraph 15c of the Procedure provides that “if in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure….., the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.”

Are there exceptional circumstances present in this case? The documentation supplied by Nominet to the Expert indicates that the Respondent’s administrative contact is Ms Denis Strain, whose address is the same as the Respondent’s. Nominet have sent their standard Dispute Resolution correspondence regarding the Complaint to Ms Strain by post and e-mail. Emails addressed to postmaster@harrodslondon.co.uk have failed to be delivered. The documentation supplied to the Expert includes a copy of an envelope addressed to Ms Strain on 14 June 2004, which was returned to Nominet and received by them on 23 June 2004. The envelope is marked “R.T.S. DISCEASED (sic) NO LONGER AT THIS ADDRESS”.

Under Paragraph 2a of the Procedure, Nominet will send a complaint to the Respondent using, in its discretion, one of the following means:

i sending the complaint by first class post, fax or e-mail to the Respondent at the contact details shown as the registrant or other contacts in Nominet’s Domain Name register database entry for the Domain Name in dispute;

ii sending the complaint in electronic form (including attachments to the extent available in that form) by e-mail to:

B if the Domain Name resolves to an active web page (other than a genuine page which Nominet concludes is maintained by an ISP for the parking of Domain Names), to any e-mail address shown or e-mail links on that web page so far as this is practicable; or

Iii sending the complaint to any addresses provided to it by the Complainant under Paragraph 3 (b) (iii) of the Procedure so far as this is practicable.

Under Paragraph 2 of Nominet’s current Terms and Conditions the registrant
must inform Nominet promptly of any change in his registered details, and
those of his Agent if applicable. It will be the registrant’s responsibility to
maintain and update any details he submits to Nominet and to ensure that his
details are up to date and accurate. In particular, it is the registrant’s
responsibility directly or by his agent to ensure that Nominet has his full and
current postal address. The Expert is satisfied that Nominet have complied
with their obligations under paragraph 2a of the Policy and that it is in order
for him to proceed with this Decision.

Since about 1849, the Complainant and its predecessors have operated the
world-famous Harrods Department Store in the Knightsbridge area of London,
England. The flagship Harrods store is unique and highly prestigious and the
Harrods Department Store has been promoted internationally for many years.
The Complainant has been active on the Internet for many years and, in
particular, has actively operated the website www.harrods.com since 14
February 1999. The Complainant is the owner of a world-wide trade mark
portfolio in respect of the mark HARRODS and ranks 41st in the list of the
world’s top 100 brands published in “The World’s Greatest Brands”. The
Complainant has been successful in a number of proceedings under the
Internet Corporation for Assigned Names and Numbers’ Uniform Domain
Name Dispute Resolution Policy in respect of its brand.

The Respondent registered the Domain Name on 13 April 2000. The
Domain Name was due for renewal on 13 April 2004. It has been detagged
and suspended pending the determination of the Complaint. The Expert has
seen no evidence that the Domain Name has been used for the purposes of
e-mail or a web-site since registration on 13 April 2000.

The Complainant’s representative has made detailed submissions on behalf of the Complainant, which read as follows:

The Complainant has rights in respect of a name or mark which is identical or similar to the domain name

The Complainant is the owner of over 150 years of international goodwill and reputation in the name HARRODS. Since about 1849, the Complainant and its predecessors have operated the world-famous Harrods Department Store in the Knightsbridge area of London, England. The Complainant's flagship Harrods store is unique and highly prestigious, providing over one million products and 50 separate services. The store typically serves approximately 35,000 customers each business day and it has become a "mandatory" stop for tourists visiting England. The Harrods Department Store has been promoted internationally for many years and its international reputation has been reinforced by extensive overseas exports and by an international mail order business that extends worldwide. The Complainant has also introduced satellite stores at major International Airports such as London Gatwick, London Heathrow, Frankfurt, 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 terms of Internet presence, the Complainant has been active on the Internet for some years and in particular, has actively operated the Internet website <www.harrods.com> since 14 February 1999. Representative pages are attached as Annex 1. As a result of the quality of the Complainant's goods and services, the tremendous volume of its customers, and the extensive advertisement and promotion of the HARRODS trade mark, the HARRODS mark is famous, has acquired substantial goodwill belonging exclusively to the Complainant and has come to be and is recognised as an indicia of origin exclusively identified with the Complainant. (See extracts from "The World's Greatest Brands" by Interbrand, which ranks Harrods in 41st place in its list of the world's top 100 brands attached as Annex 2 and copies of some of the decisions by WIPO Panels in response to complaints filed under ICANN's Dispute Resolution Policy attached as Annex 3). No doubt as a direct consequence of such reputation the Complainant has been the victim of a number of domain name disputes. However, it has always been successful in the retrieval of domain names which seek to take unfair advantage of its world famous brand.

The Complainant 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, leather goods, bed linen, textiles, coffee, tea, clothing for children, men and women, toys, cafeteria services, fashion consultation, photography, beauty and hairdressing salons, banking and brokerage services, real estate management and insurance. As a result, the Complainant is the owner of a worldwide trade mark portfolio that includes the following trade marks: UK Trade Mark No. 1266810 registered 10 May 1986 for the mark HARRODS for various goods in Class 16. UK Trade Mark No. 2245927 registered 19 September 2000 for the mark HARRODS for services in Class 35. Community Trade Mark No. 62414 registered 1 April 1996 for the mark HARRODS for a wide variety of goods and services in Classes 1 to 42. (Trade Mark Register print-outs and copies of the Trade Mark Registration Certificates are attached as Annex 4).

The Domain Name is similar to trade marks in which the Complainant has rights (Paragraph 2(a)(i) of the Policy). The only difference between the Respondent's Domain Name and the Complainant's HARRODS trade mark is the addition of "london". Since Harrods' flagship store is based in London and given the fact that the HARRODS mark instantly evokes the famous Knightsbridge store, the combination of "Harrods" and "London" can only refer Internet users to the geographical location of the Harrods Store. Thus the commercial impression conveyed to Internet users is that the Respondent's goods or services are sponsored or endorsed by or are affiliated with the Complainant. Since it is accepted by Experts that the addition of generic or descriptive terms or words designating the goods or services with which the mark is used does not render the Respondent's domain names generic or descriptive, the Domain Name is similar to the Complainant's HARRODS mark (See for example Nokia Corporation v Just Phones Limited (DRS 0058) and Harrods Limited v George Wilson (DRS 0426) which concerned the generic or descriptive words "online" and "direct" in which the Expert stated that "such elements are not material when placed alongside a mark of the fame and repute of the Complainant's HARRODS mark ... it is the 'HARRODS' component which renders the Domain Names distinctive.")

The Complainant submits that the Domain Name was registered in a manner, which at the time of registration, took unfair advantage of or was unfairly detrimental to the Complainant's rights and that the Domain Name is therefore an Abusive Registration (Paragraph 2(a)(ii) of the Policy). The Complainant also submits that the Respondent registered the Domain Name as a blocking registration against the Complainant's name/trade marks. (Paragraph 3(a)(i)(B) of the Policy). By registering the Domain Name the Respondent has prevented the legitimate owner of rights in the HARRODS name from registering and using the Domain Name (the Respondent not having a prima-facie right in the Domain Name or a valid reason for its registration). In this regard, reference is made to Peoplesoft UK Ltd v K L Kane (DRS 00120) which stated that "where an allegation of blocking is made, there must be, inter alia, a consideration of the purposes to which the domain can be put by the Registrant". Thus, in view of the Complainant's pre-existing trade mark rights and domain names, such as <harrods.com> the Complainant submits that there is no legitimate purpose for which use of the Domain Name could be made. The Domain Name was either registered to prevent the Complainant from registering or using the Domain Name or with a view to forcing the Complainant to try to purchase the Domain Name. Paragraph 3(a) of the Policy sets out a non-exhaustive list of factors that may evidence Abusive Registration. Previous Experts have explicitly held that these factors are only exemplary and indicative; they are not definitive. Thus in Nokia Corporation v Just Phones Limited (DRS 0058) it was made clear that an Abusive Registration may be evidenced by satisfaction of the definition of "Abusive Registration" as found in Paragraph 1 of the Policy. The Complainant submits that the reasoning in Nokia Corporation v Just Phones Limited (DRS 0058) is correct. Where a respondent cannot use a domain name without violating the complainant's rights under the applicable law, the registration is an Abusive Registration, even if the respondent has done nothing but register the domain name. This is particularly the case where the complainant's mark is distinctive, as in the case of the HARRODS mark, since it is unlikely that the Respondent would have selected the Domain Name without knowing of this reputation. (See also Interfora (F.T.DA.A) British Unit Ltd v Softdesign Services Limited (DRS 00239)). In Pickfords Limited v Anglo Continental Limited (DRS 00187) the Expert stated that "the fact that the Respondent has been given no permission or authority to register the name creates a presumption that the registration takes unfair advantage of the Complainant's rights ...in the hands of the Respondent the Domain Name constitutes an illegitimate exploitative threat". Accordingly, the Respondent's Domain Name suggests a false representation of origin or sponsorship for any associated products, goods or services and was undoubtedly chosen by the Respondent in an effort to ride off the goodwill associated with the Complainant's HARRODS trade mark, in which the Complainant enjoys exclusive rights. In addition, the Complainant does not believe that the Respondent can demonstrate any circumstances that would evidence that the registration of the Domain Name was not an Abusive Registration for the purpose of Paragraph 4 of the Policy. Since the Respondent has not responded to the Complainant's correspondence, there is no direct evidence of the Respondent's purpose of registration. It is therefore appropriate for reasonable inferences to be drawn by the Expert (see Scottish Police Federation v Rolf Carlin (DRS 00080)). Such interferences (sic) are as follows: (1) the Domain Name is so closely connected to the Complainant that it is difficult to conceive of a genuine purpose that anyone not connected with the Complainant could have for registering it; (2) the Respondent is not connected with the Complainant and the Complainant has not consented to the registration of the Domain Name; (3) the Respondent undeniably had the Complainant in mind at the time of its registration; and (4) the Respondent has not used the Domain Name (the Complainant is aware this cannot itself constitute an Abusive Registration). The Respondent has not been commonly known by the name HARRODS (Paragraph 4(a)(i)(B) of the Policy). No limited companies have been registered in this name with Companies House for England and Wales and no website is to be found at the address <www.harrodslondon.co.uk>. The Respondent must have been aware of the Complainant at the time of registration of the Domain Name. It is in inconceivable that the Domain Name could have been registered without knowledge of the Complainant. In view of the fame of the Complainant's HARRODS mark the Respondent cannot make a legitimate non-commercial or fair use of the Domain Name (Paragraph 4(a)(i)(C) of the Policy). Nor can the Respondent make a genuine offering of goods or services under the Domain Name (Paragraph 4(a)(i)(A) of the Policy) nor support an argument that the Domain Name is generic or descriptive (Paragraph 4(a)(ii) of the Policy). The Complainant has rights in respect of trade marks that are identical or similar to the Domain Name, which in the hands of the Respondent is an Abusive Registration. The Complainant considers that the Complaint proves this on the balance of probabilities.”

The Expert confirms that he has perused the documents contained in the Annexes referred to in the Complaint.

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it
must prove to the Expert, on the balance of probabilities, both that it has
Rights in respect of a name or mark which is identical or similar to the
Domain Name and that the Domain Name, in the hands of the Respondent, is
an Abusive Registration as defined in Paragraph 1 of the Policy.

On the basis of the evidence submitted, it is clear that the Complainant has
substantial rights in the name “Harrods” within the meaning of the Policy. The
Domain Name includes the additional word “london”, which the Expert
regards as descriptive, although this does not render the Domain Name
generic or descriptive. The Expert agrees with the Complainant’s contention
that the word “london” simply refers to the geographical location of the
Harrods store. In assessing whether or not a name or mark is identical or
similar to a domain name, it is also appropriate to discount the domain suffix
<co.uk> which is of no relevant significance and wholly generic.

The Expert finds that, for the purposes of the Policy, the Complainant does
have Rights in respect of a name of mark which is similar to the Domain
Name.

Is the Domain Name, in the hands of the Respondent, an Abusive
Registration? Paragraph 1 of the Policy defines “Abusive Registration” as a
Domain Name which either:

“i was registered or otherwise acquired in a manner which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR

ii has been used in a manner which took unfair advantage of or was detrimental to the Complainant’s Rights.”

A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration, is set out in Paragraph 3 of the Policy.

The Complainant submits that the Respondent registered the Domain Name as a blocking registration against the Complainant’s name/trade marks. Under Paragraph 3 a i B one of the factors which may be evidence that the registration of the Domain Name is an Abusive Registration is that the Respondent has registered or otherwise acquired the Domain Name “as a blocking registration against a name or mark in which the Complainant has Rights”. In a similar case (Harrods Limited –v- Mr George Wilson DRS 0426) the view of the Nominet Expert was that the key to understanding whether any particular domain name registration is a blocking registration lies in evidence of the respondent’s intent in making that registration. The Expert agrees with this view. In the case now being decided there is no evidence of the Respondent’s actual intent. The Expert agrees with the Complainant’s submission that there is no legitimate purpose for which use of the Domain Name by the Respondent could be made. In the absence of any explanation from the Respondent the Expert concludes that the Respondent must have been award of the existence of the Complainant and that, on the balance of probabilities, the Respondent would have been aware of the Complainant’s website www.harrods.com, which was registered in February 1999. The Expert concludes that, on the balance of probabilities, the Respondent registered the Domain Name to prevent the Complainant from registering or using the Domain Name.

The Complainant has made further submissions, bearing in mind that paragraph 3 a of the Policy sets out a non-exhaustive list of factors which may be evidence of Abusive Registration and that previous Nominet Experts have held that these factors are only exemplary and indicative and that they are not definitive. The Expert does not consider it necessary to deal with these submissions in detail in this case. However, the Expert has considered Paragraph 4 of the Policy headed “How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration”. The Complainant has submitted that the Respondent cannot demonstrate any circumstances that would evidence that the registration of the Domain Name was not an Abusive Registration for the purpose of Paragraph 4 of the Policy. The Respondent has not responded to the complaint. On the evidence available, there does not appear to be any reasonable response, which the Respondent could make under Paragraph 4 of the Policy in this case. Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in Paragraph 1 of the Policy.

In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name www.harrodslondon.co.uk be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Harrods Ltd -v- DJV Associates [2004] DRS 1758 (5 July 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1758.html Cite as: [2004] DRS 1758