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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Harrods Ltd v Newwave Security [2006] DRS 4093 (24 November 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4093.html Cite as: [2006] DRS 4093

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Nominet UK Dispute Resolution Service

DRS Number 04093

Harrods Limited -v- Newwave Security

Decision of Independent Expert

1. Parties

Complainant Type: Business

Country: GB

Respondent: Newwave Security

Country: GB

2. Domain Name

harrodsvillage.co.uk ('the Domain Name')

3. Procedural Background

The Complaint has been handled on behalf of the Complainant by Mr Jeremy Dickerson of Burges Salmon LLP, Narrow Quay House, Narrow Quay, Bristol BS1 4AH. It was lodged electronically with Nominet on 5 October 2006. Hard copies were received on 10 October 2006.

The Respondent was duly notified of the Complaint by paper correspondence to the above postal address. He was also notified by email to '[email protected]', which returned 'undeliverable' messages. Nominet received no response to its correspondence.

Accordingly, on 3 November 2006, the Complainant was invited to pay the fee for an expert decision. The fee was received on 8 November 2006. On 10 November 2006 Claire Milne was appointed to act as expert in the case, having confirmed that she knew of no reason why she could not properly do so; and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.

4. Outstanding Formal/Procedural Issues (if any)

The hard copy of the Complaint differed slightly from the electronic copy, in the correction of a mistaken case reference and date, and the re-insertion of angle parentheses and paragraph breaks which the electronic version had suppressed. I have relied on the corrected hard copy version. I appreciate the Complainant's care in making these corrections and drawing them to my attention.

5. The Facts

The following account is based on material supplied to me in the Complaint file, supported by evidence and which I have no reason to question. In addition I have today observed the websites at the domain names mentioned in the Complaint.

Harrods Limited is a very well established and widely known department store situated in Knightsbridge, London. It has registered trademarks in the name 'Harrods' in many categories of goods and services, including, under class 35:

"the bringing together for the benefit of others, of a variety of goods through online media enabling customers to conveniently view and purchase those goods which would normally be available in a departmental store through the said online media or by means of telecommunications".

The Complainant runs its own website at www.harrods.com (also reached via www.harrods.co.uk and www.harrodsvillage.com). Currently the main feature on the home page is Luxury Christmas Hampers. Within the same website is a description of the Harrods Village property development of converted Harrods warehouses in Barnes, London.

On 14 July 2006 the Respondent registered the domain name. At the date of the Complaint, the domain name was not in use. Today, however, it points to a parking page containing links labelled, among others, 'Harrods Knightsbridge', 'Harrods Tea', 'Quality Gift Hampers', 'Harrods Department' and 'London Christmas Shopping'. Clicking on any of these links leads to other similar pages. In the lower right hand corner of all these pages is a message 'Domain may be for sale…Interested in buying this domain?' with a link allowing offers for the domain name to be made online.

6. The Parties' Contentions

There has been no response. The Complainant's contentions follow.

Rights

7. The Complainant has Rights in respect of the name and mark Harrods. This is supported by evidence both of trademark registrations and of the global fame of the name (for example, its inclusion in a list of the world's top 100 brands).
8. The domain name is identical or similar to Harrods, the Name and Mark in which the Complainant has Rights. This is supported by references to WIPO decisions on harrodsgarments.com, charlesharrod.com, harrodsdepartmentstore.com and harrodsstores.com and DRS decision 01758 on harrodslondon.co.uk. In all of these, the experts concerned found that the fame of the 'harrod' name was sufficient to make the name similar to Harrods, even if accompanied by the other element of the domain name in question (which other element may be generic or descriptive).
9. Furthermore, the domain name is not just similar but confusingly similar to 'Harrods', as it conveys the commercial impression that any services offered under this domain name would be sponsored or endorsed by, or affiliated with, the Complainant.

Abusive registration

10. The 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.
11. The registrant's company Newwave Security trades as Euronaming.co.uk, an internet company dealing in domain name registration. Therefore, the registration is primarily a blocking registration, with the intention of preventing the legitimate owner of rights in the name from registering and suing the name.
12. The Respondent has no prima facie right in the name or valid reason for registering it, has no connection with the Complainant and has not used the domain name.
13. It is inconceivable that the Respondent would have chosen this domain name without being aware of its reputation.
14. It is difficult to conceive of a genuine purpose that anyone not connected with the Complainant could have for registering it.
15. Discussion and Findings:

The Nominet Dispute Resolution Service Policy ('the Policy') paragraph 2 requires that for a complaint to succeed the Complainant must demonstrate, on the balance of probabilities, that both:

i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

The Complainant has provided ample evidence of its Rights in the name Harrods, and of the fame of that name. I do not accept, though, that its fame is such that a combination of 'harrods' or 'harrod' with any other element in a domain name is automatically similar to Harrods for the purpose of Nominet's policy. The specific other elements in the cited earlier decisions all have a clear connection with the Complainant, whereas the connection of the term 'village' with Harrods is less clear, and has not been identified in the Complaint (apart from the inclusion in an annex of a reference to the property development Harrods Village already mentioned).

In common English usage a village is a small rural settlement, an idea remote from a large store in central London with a global reputation. However, I notice an increasing usage of the word 'village' in the context of shopping centres and malls, presumably intended to suggest a friendly, human-scale environment. In this case I am prepared to accept that the word 'village' should be read in this new commercial sense, and that as such it does have a connection with the Complainant, making the compound harrodsvillage similar to Harrods for the purpose of Nominet's policy.

Abusive Registration

Paragraph 1 of the Policy defines Abusive Registration to be 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 unfairly detrimental to the Complainant's Rights.

At the time of the Complaint, the domain name had not been used, so the Complainant was unable to present a case in relation to the second limb, unfair usage. It therefore presented its case in relation to the first limb, unfair acquisition. This is hard to do in the absence of any response from the registrant (either to this complaint or to previous correspondence) and without information about the registrant or his business, other than that he trades in domain names (which does not preclude having other occupations as well).

The Complaint asserts that the registration of the name must be abusive, which of course is not true in general. Harrod is an English surname shared with the Complainant by many unconnected people, some of whom ply their own trades under that name and wish to make them known on the internet For example, a quick search turns up harrodhorticultural.co.uk, harrod.uk.com and harrodscaterers.co.uk, which appear to be bona fide businesses unconnected with the Complainant and trading in gardening goods, sports equipment and catering respectively.

The absence of response is the crucial factor here. Although emails to the Respondent were undelivered, I have no reason to expect that he did not receive Nominet's paper correspondence and I therefore assume those he chose not to respond. I infer from this that, unlike the businesses just mentioned, he probably had no genuine reason for the registration. Given the fame of the Harrods name, I agree with the Complainant that on the balance of probabilities the registration was an opportunistic one with the intention of gain from the Complainant's reputation, and hence abusive.

The recent use of the name, which was not known at the time of the Complaint, removes any room for doubt. The holding page that the name now points to has the clear aim of profit from Harrods' name, whether through click-through revenue or through selling the name.

16. Decision

The Complaint shows that the Complainant has Rights in a name similar to the domain name and, on the balance of probabilities, that the registration was abusive. The Complaint therefore succeeds and the domain name should be transferred to the Complainant as requested.

Claire Milne

24 November 2006