HARRODS WINS COURT BATTLE
Byline: Vicki M. Young
NEW YORK — Harrods Ltd., the U.K. retailer, last month won a court fight in the U.S. over its domain name in a cybersquatting dispute with an Argentine company, but the battle could be just beginning.
The lawsuit was filed in February 2000 in a U.S. federal court in Alexandria, Va., and was one of the early cases filed shortly after former President Bill Clinton signed the Anticybersquatting Consumer Protection Act into law in November 1999. Both Harrods and the Argentine firm, Harrods Buenos Aires Ltd., are non-U.S. companies, but a U.S. court has jurisdiction over the dispute because the domain names contested were registered through a Virginia-based Internet company, Network Solutions. A bench trial was held in April. Judge Leonie M. Brinkema, who presided over the case, issued her opinion on June 27. According to court records, Harrods Buenos Aires has filed a notice of its intent to appeal Brinkema’s decision.
Rodney Glover of Gardner, Carlton & Douglas in the District of Columbia, who represents the Argentine firm, said that both companies hold valid trademark registrations for the Harrods name, the London retailer in the U.K. and the U.S. and the Argentine firm in Argentina.
He said that the appeal will raise constitutionality issues: one over the retroactive aspect of the law since his client filed for the domain names before the effective date of the anticybersquatting act; and the other concerning which valid trademark holder should get priority over a domain name, the U.S. holder over a foreign holder or the first to register the U.S. domain name. Glover also said that his client registered in the U.S. because in 1999 there was no registration authority in South America to obtain the top-level domain names.
Ralph Taylor of the D.C. office of Dorsey & Whitney, representing Harrods Ltd., said: “We’ve looked at the constitutional issues and we don’t think there’s a constitutional problem.” He acknowledged that “there are interesting issues here and this case could signal more action from European-based entities using the [anticybersquatting law] to stop people registering me-too type names.” Taylor disclosed that a companion case filed in a Maryland federal court is pending against the same Argentine firm. That case involves 192 allegedly infringing names registered in 2000 with a Maryland-based registrar.
In the case that went to trial in April in Alexandria, 60 infringing names — variations of the Harrods name in conjunction with Argentina, Buenos Aires or another word using the “.com,” “.net” and “.org” suffixes — were in dispute. Unlike some other firms that register domain names but don’t use them, the Argentine company uses the domain names as a link to a Web site about a planned Harrods Buenos Aires Internet retail site. Domain name usage was modified on July 13 when Judge Brinkema ordered that the disputed names be deemed “inactive and not linked” to any Web page, pending further order of the court.
The Argentine firm was created by the London-based retailer when it opened a store in Buenos Aires in the early 1900s. The two firms began operating as separate entities in 1960 and the store was closed during the 1990s.