WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Christie's Inc. v. Christie’s Fine Jewelry
Case No. D2002-1144
1. The Parties
The Complainant is Christie’s Inc., a New York corporation, having its principal place of business in New York, New York, United States of America, represented by Hughes, Hubbard & Reed, LLP, New York, New York, United States of America.
The Respondent is Christie’s Fine Jewelry, Inc., a Florida corporation having places of business in Orlando, Florida and Casselberry, Florida, United States of America. Respondent is not represented by counsel.
2. The Domain Name and Registrar
The disputed domain name <christinesauction.com> ("Contested Domain Name") is registered with Network Solutions, Inc., Dulles, Virginia, United States of America ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 17, 2002. On December 17, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On December 30, 2002, the Registrar 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.
A Formal Requirements Compliance Checklist was initiated by the Center on December 17, 2002, and completed January 7, 2003. The Center determined that the Complainant was in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The Panelist has independently reviewed the requirements and finds that the Complainant is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.
The Complainant paid the required fees for a single-member Panel on time and in the required amount.
No formal deficiencies having been noted, on January 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Registrar and ICANN), setting a deadline of January 27, 2003, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in Whois confirmations received from the Registrar and by post/courier to the indicated postal addresses. Having reviewed the communication records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
On January 7, 2003, a Response was received from the Respondent in reply to the Notification. "What the hell are you talking about, leave me alone!" No other response having been filed, on January 28, 2003, the Center notified Respondent of its default.
On February 4, 2003, the Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2002-1144 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horning’s Statement of Acceptance and Declaration of Impartiality and Independence was received on February 5, 2003. On February 7, 2003, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and projected decision date, in which Richard Allan Horning was formally appointed as the Sole Panelist. The projected decision date was February 21, 2003.
The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and the Supplemental Rules.
4. Factual Background
Christie’s is an auction house known world-wide. Founded in 1766, Christie’s alleges that it is the oldest fine art auction house in existence. In 1999, Christie’s sales totaled 2.3 billion dollars. Christie’s has 119 offices located around the world, including locations in New York, Stockholm, Los Angeles, London, Amsterdam, Paris, Zürich, Monte Carlo, Geneva, Milan, Rome, Athens, Tel Aviv, Taipei, Hong Kong, Bangkok and Singapore.
Christie’s auctions for fine jewelry are allegedly a prominent and significant aspect of its business. According to the Complaint, Christie’s offers approximately sixty-five auctions of fine jewelry every year, at a variety of its sale locations worldwide. (Complaint, Exhibit C).
Complainant currently owns the following U.S. federal trademark registrations (Complaint, Exhibit D):
· CHRISTIE’S, Reg. No. 1,915,359, for "auctioning of fine and decorative art, antiques, jewelry, and other valuable objects", registered on August 29, 1995;
· CHRISTIE’S EAST, Reg. No. 1,908,759, for "auctioning of fine and decorative art, antiques, jewelry, and other valuable objects", registered on August 1, 1995;
· CHRISTIE’S, Reg. No. 2,200,318, for "valuation of personal property", registered on October 27, 1998;
· CHRISTIE’S APPRAISALS, INC., Reg. No. 1,908,802, for "appraisals of fine and decorative art, antiques, jewelry, and other valuable objects", registered on August 1, 1995;
· CHRISTIE’S GREAT ESTATES, Reg. No. 2,083,084, for "real estate brokerage services", registered on July 29, 1997;
· CHRISTIE’S 1766 & Design, Reg. No. 1,956,211, for "auctioning of fine and decorative art, antiques, jewelry, and other valuable objects", registered on February 13, 1996;
· CHRISTIE’S INTERNATIONAL MAGAZINE, Reg. No. 1,916,410, for "publications, namely magazines featuring information pertaining to auctioning of fine art and decorative art, antiques, jewelry, and other valuable objects", registered on September 5, 1995; and
· CHRISTIES 1766 & Design, Reg. No. 2,200,317, for "valuation of personal property", registered on October 27, 1998.
Several of these registrations are in the name of Christie, Manson & Woods International, Inc., now Christie’s Inc. by change of name (Complaint, Exhibit D).
The Christie’s marks have been involved in prior proceedings before WIPO. In Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., WIPO Case No. D2001-0075, the Panelist found that the very fact of Respondent’s "regist[ration] [of] such a famous mark to use in the same business as [Christie’s] reeks of bad faith." In Christie’s Inc. v. Ola Ljungberg, WIPO Case No. DNU2000-0002, the Panelist referred to ("[t]he Complainant [as] the well-known auction house ‘Christie’s’."
Respondent registered the Contested Domain Name on September 14, 2000 (Complaint, Exhibit A). At the time the Complaint was filed, and at the time the dispute was submitted to the Panelist, the Contested Domain Name was not linked to an active website.
5. Parties’ Contentions
Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
(i) Complainant specifically contends that the Contested Domain Name is confusingly similar to Complainant's registered marks, as the Contested Domain Name consists of the CHRISTIE'S mark with an "N" inserted, plus the word AUCTION.
(ii) Complainant contends that Respondent should be considered as having no rights or legitimate interests in respect of the Contested Domain Name, as Respondent’s domain name registration occurred many years after Complainant obtained its trademark registrations for its registered marks, and Respondent has no trademark registrations, or applications to register, of its own.
(iii) Complainant contends the Contested Domain Name should be considered as having been registered and used in bad faith for the following reasons:
1. By using the Contested Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.
2. The Contested Domain Name was registered for the purpose of disrupting the business of Complainant.
3. Respondent is not making a legitimate non-commercial or fair use of the Contested Domain Name, but in fact is using the Contested Domain Name for commercial purposes in the same field in which Complainant is using its registered marks.
Respondent has not contested the allegations of the Complainant. Respondent has however made the following statements in communications with Complainant and the Center:
1. On December 18, 2002, Respondent emailed in-house counsel at Christie’s, and Complainant’s outside counsel. "What website are you talking about? How can you complain about something that doesn’t exist? Tell me that? I see that you spent some money making these nice folders. Poof!"
2. On December 19, 2002, Respondent emailed the Center. "complaint? how about harrASSment!"
3. On January 7, 2003, Respondent emailed the Center. "What the hell are you talking about, leave me alone."
4. On January 7, 2003, the individual listed on the Whois report as the Technical Contact emailed the Center.
"Tamara, i may be mistaken, but i think this issue is resolved…
it put up a new domain name for my customer and took down the old one…i remember her mentioning something about this
anyway, i don't see how i involved…pls adivse if different
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have experience with similar disputes, to the extent that it would assist the Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panelist shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no legitimate interests in respect of the domain name; and
3) that the domain name has been registered and used in bad faith.
The Panelist finds that domain name at issue is either identical or confusingly similar to the registered trademarks of Complainant. Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0093562; America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case FA0093679; Marriott International, Inc. v. John Marriot, NAF Case No. FA0094737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF Case No. FA0094219; AT&T Corp. v. CME Inc., WIPO Case No. D2001-1060; Microsoft Corporation v. Global Net 2000, Inc, WIPO Case No. D2000-0554; America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746; The Chancellor, Masters and Scholars of the University of Oxford v. CQ, WIPO Case No. D2001-0920.
Given the virtual identicality between Complainant’s Christie’s marks and the Contested Domain Name, likelihood of confusion must be presumed. Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119; Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution Case No. AF0104. The addition of AUCTION at the end of the Contested Domain Name does not distinguish the Contested Domain Name from Complainant's trademarks; given the nature of Complainant's business it only serves to create or reinforce a confusing similarity.
Respondent is not commonly known by the domain name at issue, and has not acquired trademark or service mark rights in the domain name. The Contested Domain Name was registered by Respondent long after Complainant’s registration of its trademarks. The Panelist finds that Respondent has no rights or legitimate interests in the domain name.
The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It must be presumed that Respondent was aware of the Complainant's registered marks when Respondent registered the Contested Domain Name. Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Deutsche Lufthansa A.G. v. Jin Wang Huh, WIPO Case No. D2001-1226; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464.
Complainant and Respondent are both engaged in the auction of jewelry, Complainant at the high end and Respondent at the "popularly priced" "Ebay" end of the market. The record shows that in the fall of 2002, Respondent’s website at "www.christinesauction.com" was an online jewelry retailer. The site provides links to "www.ebay.com" allowing users to participate in auctions of Respondent’s jewelry. (See Complaint, Exhibit H).
In the fall of 2002, Respondent was using the domain name <christinesauction.com> in the same manner that the infringing domain name "<christiesauction.com> in Christie’s v. Tiffany’s Auction had been used. The content of the "www.christinesauction.com" website, as well as the product links on "www.ebay.com", are almost identical to the former "www.christiesauction.com" website. Compare Complaint Exhibit H with Complaint Exhibit I. The "www.christinesauction.com" provided the same toll-free number urging users to call to "discuss our lovely jewelry," and providing a link to "visit our on-line store" of jewelry items from "Christie’s Fine Jewelry."
This Panelist notes with considerable interest the decision of the Panelist in Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., WIPO Case No. D2001-0075. There the Panelist ordered Tiffany’s Jewelry Auction, to transfer the domain name "christiesauction.com" to Christie’s. Tiffany's Jewelry Auction was, at the time, under the direction of Respondent’s then, now former, President, Director and agent Leland McKee. See Complaint, Exhibit E and Exhibit G and LEXIS Searches. The Panelist there held that the Respondent in that matter was "merely using the Complainant’s famous trademark to attract visitors to its more modest operation." This Panelist makes the same finding. See also, Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, TRW Inc. v. Autoscan Inc., WIPO Case No. D2000-0156; Zwack Unicum Rt. v. Duna, WIPO Case No. D2000-0037.
As noted in Telstra Corp. v. Nuclear Marshmallows, WIPO D2000-0003, "‘being used in bad faith’ is not limited to positive action, inaction is within the concept." "Passive holding" on its own may, in certain circumstances, constitute using a domain name in bad faith under paragraph 4(b) of the Rules. Id. In determining this issue, a Panelist "must give close attention to all the circumstances of the Respondent’s behavior." Id. Relevant factors weighing in favor of a finding of bad faith include: (1) the strong reputation and fame of Complainant’s trademark; (2) the lack of evidence of Respondent’s actual or contemplated good faith use of the domain name; and (3) false contact information of Respondent and attempts by Respondent to conceal its identity. Id.
The fact that Respondent has deactivated its website, apparently after receiving a cease and desist letter from Complainant’s counsel, does not guarantee that the Respondent would not reactivate its website in the future or detract from its prior bad faith use. Accu Weather, Inc. v. Global Net 2000, Inc., NAF Case No. FA0094645 ("Even though direct links to the pornographic sites no longer exist, nothing restricts Respondent from reverting to this or similar behavior in the future").
I find that in this case Complainant has carried its burden of proof in establishing that Respondent has registered and used the Contested Domain Name in bad faith.
For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent's domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the domain name <christinesauction.com> be transferred to the Complainant.
Richard Allan Horning
Dated: February 21, 2003