The First Complainant is Tiffany (NJ) Inc., Parsippany, New Jersey, United States of America and the Second Complainant is Tiffany and Company, New York, New York of, United States of America, both represented by Arnold & Porter, United States of America.
The Respondent is Tiffany Asia, La Paz, Linuy, Peru.
The disputed domain name <tiffany-asia.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2008. On September 25, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 25, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2008.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on November 4, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainants have been renowned for over 170 years as purveyors of high quality goods, including jewellery, under the trade name TIFFANY.
The First Complainant has over many years registered a series of trademarks for TIFFANY and related terms and has licensed them exclusively to the Second Complainant. Among those trademarks is trademark No.133, 063 registered on July 6, 1920 with the United States Patent and Trademark Office for TIFFANY.
The trademarks also include many that have been registered throughout Asia.
The Complainants sell their goods under the name and trademark TIFFANY at their own stores, boutiques in certain other prestigious stores and their website on the Internet. The Complainants have registered several domain names that resolve to the official Tiffany website “www.tiffany.com”.
The Panel further notes that while the Complainants seem to have at one point contemplated requesting the addition of two domain names, no such application was made to the Panel once it was appointed. In any event had such a request been received after panel appointment, absent exceptional circumstances, the Panel would have been disinclined to grant such request for reasons set out in WIPO Case No. D2008-0547. The Complainants are in any event free to file a separate complaint concerning the additional Domain Names should they choose.
The Respondent registered the disputed domain name <tiffany-asia.com> on March 23, 2007.
The Complainant alleges that the disputed domain name <tiffany-asia.com> should no longer be registered with the Respondent, but that it should be transferred to the Complainants.
It contends that this should be done because, within the meaning of paragraph 4(a) of the Policy, the domain name is confusingly similar to the Complainants' registered TIFFANY trademark, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainants maintain that they can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainants.
In support of its case on the first of these three elements, the Complainant relies on the registered TIFFANY trademark to which reference has already been made. It then says that it is self-evident that the domain name <tiffany-asia.com> is confusingly similar to the TIFFANY trademark as it incorporates the trademark as a whole, merely adds the word “Asia” and, as a result, implies that it is associated with the Complainants as its Asian division which it is not.
The Complainants then contend, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the facts show that it cannot bring itself within any of the provisions of paragraph 4(c) of the Policy, it has never been authorised by the Complainants to use their TIFFANY trademark and it is using the domain name for a website to advertise for sale jewellery that it falsely claims is “Tiffany” jewellery and also to perpetrate a financial fraud on the public.
Finally, the Complainants contend that the domain name was registered and is being used in bad faith. They contend that this is so because the Respondent must be presumed to have known of the Complainants' famous TIFFANY trademark, its choice of the name could not have been a coincidence, it has been using the disputed domain name for a website that promotes goods falsely described as “Tiffany” and is also using it to promote its unlawful investment scheme.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15 of the Rules provides that the panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainants to make out their case and past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases, from the lack thereof. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainants to succeed they must prove, within the meaning of paragraph 4(a) of the Policy, that:
i. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
ii. The Respondent has no rights or legitimate interests in respect of the domain name; and
iii. The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainants must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
The Panel finds that the domain name <tiffany-asia.com> is confusingly similar to the principal trademark of the Complainants, namely United States trademark No.133, 063 registered on July 6, 1920 with the United States Patent and Trademark Office for TIFFANY.
That is so for the following reasons. The domain name is similar to the trademark as it consists of the entirety of the trademark, with the exception that it adds the word “Asia”. Despite that addition, the domain name is confusingly similar to the trademark, as the dominant impression given by the domain name is created by the word “Tiffany”, which naturally invokes the famous trademark; a reasonable bystander would therefore assume that the addition of the word “Asia” did no more than qualify the trademark, rather than negate or detract from it and that the domain name was in substance a domain name seeking to invoke or rely on the TIFFANY trademark.
Secondly, the similarity is confusing because an objective observer would think that the expression “Tiffany” in the domain name is the same as TIFFANY the trademark and that, together, they were describing the Asian division or an Asian branch of the Complainants. This is especially so as the uncontradicted evidence is that the Complainants operate throughout Asia; Internet users in Asia are therefore likely to assume that <tiffany-asia.com> was a domain name associated with or part of the famous Tiffany business conducted in Asia. It is not surprising therefore to find, as can be seen from the decisions cited by the Complainants, that UDRP panels have regularly held that the inclusion in a domain name of a famous trademark, followed by a geographic indicator such as a country or continent, far from preventing a finding of confusing similarity, makes it more likely; see, for example PepsiCo, Inc. v. QWO, WIPO Case No. D2004-0865.
It has also been consistently held that confusing similarity is not negated by the presence in the domain name of suffixes such as the gTLD suffix “.com”.
The Panel also draws the inference that the construction of the domain name was made deliberately to ensnare Internet users and attract them to the Respondent's website in the hope that they could be inveigled into buying jewellery or taking part in a fraudulent investment scheme.
The Complainants clearly have rights in the registered trademark, the First Complainant as the registered owner and the Second Complainant as its exclusive licensee, the Panel finds that the domain name is confusingly similar to the trademark. The Complainants have accordingly established the first of the three elements that they must prove.
Under paragraph 4(a)(ii) of the Policy, the Complainants have the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows that he or she has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The panel's task in deciding if a respondent has any rights or legitimate interests in a domain name is made more difficult when the respondent is in default and does not file a response or any other form of submission. The Respondent in the present case was given notice that it had until October 20, 2008 to send in a Response, that it would be in default if the Response were not received by that date and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name <tiffany-asia.com>. That prima facie case is made out from the following considerations.
First, the Respondent chose for inclusion in the disputed domain name, without the Complainants' authorization, their famous trademark TIFFANY, a name they had used in their business for over 170 years as a purveyor of jewellery and other prestigious items. Secondly, the evidence, an attorney/ director and assistant secretary of the Complainants, shows that the Respondent has never been licensed or authorised by the Complainants to use their trademark in a domain name or anywhere else. Thirdly, the evidence shows that Respondent has used the domain name for a website purporting to sell jewellery under the name “Tiffany” which, as the Complainants have never authorised it to do so, is probably counterfeit. Fourthly, the evidence also shows that the Respondent has been using the website to obtain personal information from Internet users and perpetrate a scheme1 that has all the hallmarks of illegitimacy.
These facts, all of which are made out by evidence attached to the Complaint give rise to the prima facie case made out by the Complainants.
The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainants have thus made out the second of the three elements that they must establish.
The Complainants must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(i) circumstances indicating that the Respondent has registered or 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 the Respondent's website or location or of a product or service on the site or location.”
The Panel finds that the Complainants have shown that the Respondent registered and used the domain name in bad faith and that in particular the Respondent's conduct puts the case squarely within paragraph 4(b)(iv) of the Policy.
The reasons why the Complainant's case has been made out are as follows.
First, by registering a domain name incorporating the Complainant's famous trademark without any legitimate reason for doing so, it is more probable than not that the Respondent's intention in registering it was to create confusion with the TIFFANY trademark and also with the Complainant's famous business name and domain name. The same view has been held in many UDRP cases where a famous name has been registered in a domain name and the resulting website promotes products of the type sold by the trademark owner; see for example: Tiffany and Company, Tiffany (NJ) Inc., v. Janet White, WIPO Case No. D2003-0456.
Secondly, the Respondent has undoubtedly been attempting to attract Internet users to the website “www.tiffany-asia.com” within the meaning of paragraph 4(b)(iv) of the Policy, for the domain name has been actively used until it was recently shut down.
Thirdly, the confusion likely to be created is confusion with the TIFFANY trademark about the affiliation of the jewellery, the other luxury products and the dubious investment scheme being promoted on the Respondent's website and as to whether those products and the scheme are the Complainants' offerings or are in some way associated with them. That conclusion is justified by the following.
The Complainants have annexed to the Complaint copies of screenshots from their official website at “www.tiffany.com” and screenshots from the Respondent's website at “www.tiffany-asia.com”. As the contents of the latter is expressed in the Chinese language, the Complainants have also annexed a helpful Declaration by, a consultant to the Complainants' attorneys who is licensed to practice law in the Peoples' Republic of China. The consultant has deposed to the English translation of the Respondent's website.
The Complainants have properly advised the Center that on or about October 2, 2008 the website was shut down. However, the Panel accepts the material exhibited to the Complaint and the consultants Declaration as evidence of the contents of the website prior to October 2, 2008. It is apparent from that material that the website appears to look as close as possible to the official TIFFANY website and because of the presence of the text in the Chinese language the impression is given that it could be the website of the Complainants in Asia.
Moreover, the website solicits customers to sign up to a promotional campaign purporting to have been launched by an enterprise called the “Tattoo Group”. Upon joining and providing their banking and other personal information, members will be eligible to buy discounted “Tiffany” jewellery and other items and will also be able to invest in an apparent fraudulent scheme that is represented to return to investors their capital plus 13% interest.
It is apparent that there will be confusion in the mind of the visitor as to whether the goods and services being promoted on the website are those of the Complainants and are being promoted through their Asian division or whether as an alternative they are being endorsed by the Complainants.
Clearly, consumers who are using the disputed domain name would have arrived at the website because they wanted to buy TIFFANY products or obtain information about them, the company producing them, or products produced under the TIFFANY trademark. When the website promotes goods of the same genre as TIFFANY and does so by means of an alleged discount purchasing and investment scheme, consumers are entitled to believe that the products are genuine TIFFANY products and that the investment scheme is endorsed by the Complainants, when in fact they are not.
There is, therefore, clear scope for confusion as to whether the goods and services being promoted on the websites are associated with the TIFFANY trademark and hence with the Complainants.
The Panel finds that these circumstances create confusion with the Complainants' trademark as to the sponsorship, affiliation and endorsement of the Respondent's site and the products and services on them and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another.
The facts therefore come within paragraph 4(b)(iv) of the Policy as well as within the generally understood meaning of bad faith, both in registration and use, a conclusion that has often been reached by UDRP panels on analogous facts; see for example: Identigene, Inc. v. Genetest Laboratories WIPO Case No. D2000-1100; MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 and IndyMac Bank, F.S.B. v. Jim Kato, NAF Claim No. FA 190366 and the cases cited by the Complainants, ESPN, Inc. v. Players Sportsbook & Casino, NAF Claim No. FA95402, Popular Enters., LLC v. Am Consumers First et al, WIPO Case No. D2003-0742 and Ameriquest Mortgage Co. v. Phayze Inc., WIPO Case No. D2002-0861.
Accordingly, the Complainants have made out the third of the three elements that it must establish.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tiffany-asia.com> be transferred to the Complainants.
The Honourable Neil Anthony Brown QC
Dated: November 8, 008
1 ‘According to the complaint and its annexes, the website offered in exchange for personal information, including banking details, permission to purchase TFFANY goods at a discount and a 113 percent return on monies deposited. The Panel further notes that, according to Wikipedia ‘a Ponzi scheme is a fraudulent investment operation that involves promising or paying abnormally high returns ("profits") to investors out of the money paid in by subsequent investors, rather than from net revenues generated by any real business. It is named after Charles Ponzi.' (Wikipedia)