Nominet UK Dispute Resolution Service

DRS 05643

Harrods Limited v Josh Crutchley

Decision of Independent Expert

1.	Parties

Complainant:		Harrods Limited
Country:		GB

Respondent:		Mr Josh Crutchley
Country:		GB

2.	Domain Name

harrodss.co.uk (“the Domain Name”)

3.	Procedural Background

The complaint was entered into Nominet’s system on 16th April 2008.  Nominet validated the complaint and on 21st April 2008 sent a letter to the Respondent, noting that the Dispute Resolution Service had been invoked and notifying the Respondent that it had until 14th May 2008 to submit a Response. No Response was received.

On 15th May 2008 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy Version 2 (“the Policy”). The fee was duly paid on 21st May 2008.

On 21st May 2008 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case, Nominet duly appointed me as Expert with effect from 29th May 2008.

4.	Outstanding Formal/Procedural Issues

None. 

5.	The Facts

The Complainant operates the well-known "Harrods" department store in London, which is a very popular store and tourist attraction in its own right. It is the registered proprietor of a number of UK and European Community trade marks for the mark "Harrods". It has actively operated a website at www.harrods.com since February 1999 and internationally the Complainant has turned over billions of pounds under this trade mark annually. 

The Nominet WHOIS search with which I have been provided indicates that the Respondent registered the Domain Name on 14th October 2007.

As at 18th April 2008 (the date of the print-out with which I have been provided by Nominet) the URL http://www.harrodss.co.uk does not point to an active website.
 
The Domain Name is not the only domain name which the Respondent has registered incorporating the letters ‘harrod’. The Respondent has registered harrodss.com and harrod-uk.com, which the Complainant is currently disputing through WIPO. In a previous domain name dispute between the Complainant and the Respondent over the domain name harrodstore.com, the WIPO administrative panel issued a decision in the Complainant's favour on 8th February 2008 (Decision number C2007-1848).

6.	The Parties’ Contentions

Complaint

The Complaint is a model of brevity, therefore I set it out in full below.

“I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

1. The Complainant has rights in the Domain Name because:
a. It is registered at Companies House under the name Harrods Limited and has been since 20 November 1889, a print out of the register is attached.
b. It runs a retail store called "Harrods" which is one of the most popular tourist attractions in London. Annual sales under the Harrods name throughout the world run into billions of pounds. 
c. The name "Harrods" is well known throughout the world and has been promoted globally for many years.
d. It has been active on the internet for some years and in particular it actively operates, amongst others, the website at www.harrods.com (operating since February 1999).
e. It has a number of UK and Community trade marks for the mark "Harrods".
2. In a previous domain name dispute between the Complainant and the Respondent, the WIPO administrative panel issued a decision in the Complainant's favour on 8 February 2008. A copy of this decision is attached.
3. The Domain Name in the hands of the Respondent is abusive because it is one of a series of registrations that the Respondent has made, which because of their number, type and pattern prove that the Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well known names in which the Respondent has no apparent interest. In addition to the domain names involved in the previously mentioned domain name dispute, the Respondent has also registered harrodss.com and harrod-uk.com, which the Complainant is currently disputing through WIPO.”

The Complaint was accompanied by a bundle of documentation comprising: (1) a printout of the Companies House register for the Complainant; (2) printouts of extracted pages from the www.harrods.com website; (3) a selection of UK and Community trade mark registrations; and (4) a copy of WIPO Decision number C2007-1848.

Response

As noted above, the Respondent did not file a Response.

7.	Discussion and Findings:

General

Paragraph 2 of the Policy requires that, in order 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.

These matters must be affirmatively proven by the Complainant, notwithstanding the failure by the Respondent to file a Response. The effect of the Respondent’s default, under paragraph 15(c) of the Procedure, (there being no exceptional circumstances in this case) is that I may draw such inferences from the Respondent’s non-compliance as I consider appropriate.

Complainant’s Rights

The Complainant must prove on the balance of probabilities that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.

On the basis of the materials I have been supplied with, I am amply satisfied that the Complainant owns sufficient Rights in the designation ‘HARRODS’. It is a truly famous trade mark. The Complainant has traded on a substantial scale in the UK (and internationally) for a significant period of time under and by reference to that name, thereby generating UK goodwill. It also owns a substantial portfolio of trade mark registrations comprising or incorporating the designation HARRODS.

I am further satisfied that the name HARRODS is similar to the Domain Name www.harrodss.co.uk (ignoring, as I am required to do, the first and second level suffixes). Indeed, there is only one letter difference.

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 unfairly detrimental to the Complainant’s Rights.

The Complainant does not refer to any particular ‘use’ of the Domain Name and therefore it seems that the Complaint is essentially put under the first limb of paragraph 1: the initial registration is alleged to be abusive per se.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out under paragraph 3(a) of the Policy. A non-exhaustive list of countervailing factors are set out under paragraph 4(a) of the Policy.

The Complainant specifically invokes paragraph 3(a)(iii) of the Policy, which provides that the following factor may be evidence that the Domain Name is an Abusive Registration:

“The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent  is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

In addition to the Domain Name, the Respondent has registered harrodss.com, harrod-uk.com and harrodstore.com. The latter resulted in WIPO administrative panel Decision number C2007-1848, in which the Respondent apparently contended that he had a legitimate interest in the mark ‘HARROD’ as opposed to ‘HARRODS’. The panel rejected that submission, concluding that the Respondent had no such legitimate interest. I am not bound by that finding, nor are the evidence and submissions in that case evidence and submissions in this case. However, I do regard them as relevant to the issue under paragraph 3(a)(iii) and to the inferences I can draw from the Respondent’s failure to file a Response in this case.

Had the Respondent filed a Response in this case, he would have found it considerably harder to claim that he has a legitimate interest (or ‘apparent rights’ as paragraph 3(a)(iii) puts it) in the mark ‘HARROD’ without the additional ‘S’, because the Domain Name in question is HARRODSS.CO.UK.

I hesitate to reiterate once more the time-honoured dictum of Jonathan Sumption QC sitting as a Deputy Judge in BT v One In A Million [1998] F.S.R. 265, but in cases such as the present it is difficult to come up with a better encapsulation of the inferences to be drawn from the registration of domain names such as the present:

“There is only one possible reason why any one who was not part of the Marks & Spencer Plc group should wish to use such a domain address [marksandspencer.co.uk], and that is to pass himself off as part of that group or his products off as theirs. Where the value of a name consists solely in its resemblance to the name or trade mark of another enterprise, the Court will normally assume that the public is likely to be deceived, for why else would the Defendants choose it? In the present case, the assumption is plainly justified. As a matter of common sense, these names were registered and are available for sale for eventual use. Some one seeking or coming upon a website called http://marksandspencer.co.uk would naturally assume that it was that of the Plaintiffs.”

The Respondent is a UK resident and I would be very surprised indeed if he had never heard of HARRODS prior to 14th October 2007. As a matter of common sense, and consistently with the conclusion of the WIPO Panel, I infer that the Domain Name was registered because of its similarity to the Complainant’s trade mark and in order to benefit from traffic attracted by the Complainant’s goodwill. Moreover it does appear to me that the Respondent has been engaged, on a modest scale, in a pattern of registrations of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and that the Domain Name is part of that pattern.

On this basis I conclude that the Domain Name was registered or otherwise acquired in a manner, which at the time when the registration took place, took unfair advantage of the Complainant’s Rights. Accordingly I conclude that the Complainant has succeeded, on the balance of probabilities, in substantiating the first limb of the definition of Abusive Registration under paragraph 1 of the Policy, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.	Decision

Having concluded that the Domain Name is an Abusive Registration, the Expert determines that the Domain Name, harrodss.co.uk, should be transferred to the Complainant.

______________________		11th June 2008

         Philip Roberts			Date