Complainants are Tiffany (NJ) LLC of Parsippany, New Jersey, United States of America, and Tiffany and Company of New York, New York, United States of America, (collectively “Complainants”), represented by Arnold & Porter LLP, United States of America.
Respondent is Thomas Stanek of Austin, Texas, United States of America, appearing pro se.
The disputed domain name <mytiffanyworld.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2009. On February 3, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 3, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on February 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2009. The Response was filed with the Center on February 24, 2009.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on March 6, 2009. 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.
Complainant Tiffany (NJ) LLC is the owner of the TIFFANY trademark, and Complainant Tiffany and Company is the exclusive licensee and user of the TIFFANY trademark. Complainants own and use the following United States trademark registrations in connection with jewelry:
TIFFANY & CO. Registration No. 23,573 Registered September 5, 1893
TIFFANY Registration No. 133,063 Registered July 6, 1920
TIFFANY & CO. Registration No. 137,723 Registered November 30, 1920 (Stylized)
TIFFANY Registration No. 1,228,409 Registered February 22, 1983
TIFFANY & CO. Registration No. 1,251,356 Registered September 13, 1983
In addition, Complainants own and use these marks, and variations thereof, in jurisdictions throughout the world. Complainants' sales of goods bearing or marketed under the TIFFANY marks have exceeded USD19.4 billion at retail over the past 10 years. During the same period, Complainants have spent in excess of USD1.1 billion in advertising and promoting their TIFFANY branded products around the world. The TIFFANY marks are famous and enjoy strong recognition as a source indicator for Complainants' products.
Complainants have registered several domain names, including <tiffany.com> and <tiffanyandco.com>, both of which direct Internet users to a website providing information regarding Complainants and their merchandise. Complainants allow goods sold under the TIFFANY brand to be sold only through retail outlets owned or operated by Complainants or through a limited number of TIFFANY boutiques at certain high-end stores. Complainants do not allow their TIFFANY branded goods to be sold on sale or as “close-outs”.
Respondent registered the disputed domain name on September 23, 2008. The domain name directs Internet users to a website that advertises jewelry, and claims the jewelry is TIFFANY branded jewelry. The jewelry offered on Respondent's website is priced at a fraction of the cost of genuine TIFFANY brand jewelry products. Respondent's website includes the following statements:
- “Copyright © 2008 Tifany Jewelry Powered by Tiffany & co Jewelry” which appears at the bottom of each page of Respondent's website;
- “Hundreds of Brand New Fashionable Tiffany Jewelries at Amazing Price[s]”;
- “All Items are made of 100% 925 Sterling Silver”; and
- “Each order will come with Tiffany & Co. packing, including Box, Gift bag, Blue pouch and Polishing Cloth.”
Complainants contend that the disputed domain name is confusingly similar to Complainants' TIFFANY marks that Respondent has no rights or legitimate interests in the domain name and that Respondent has registered and used the domain name in bad faith.
Respondent contends that “tiffany” is a common word that is widely used, and that Respondent used the domain name “in a reasonable manner”. Respondent further contends that Internet users “are quite clear about the items offer on the Domain name have no any relationship with the complaints”.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to 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”.
Complainants have demonstrated that they own strong rights in the trademarks TIFFANY and TIFFANY & CO. The disputed domain name incorporates Complainants' TIFFANY trademark in its entirety. The addition of the generic words “my” and “world” do not avoid a finding of confusing similarity. See CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainants' trademarks.
Respondent is not a franchisee, affiliated business or licensee of Complainants. Respondent is not an authorized TIFFANY agent and Complainants have not authorized Respondent to register the disputed domain name or to otherwise use Complainants' marks.
Respondent is not and has not been commonly known by the disputed domain name. Respondent admits that he began using the domain name in September 2008. Respondent is operating a website at the disputed domain name that is offering what appears to be counterfeit TIFFANY jewelry for sale. Respondent is clearly attempting to confuse consumers by use of Complainants' famous trademarks throughout the website, including in a copyright notice on each page. Such use does not constitute a bona fide, legitimate use of the domain name.
Accordingly, the Panel finds that Complainants have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; or
(ii) 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's website or location of a product or service on respondent's website or location.
In view of the worldwide fame of Complainants' TIFFANY marks, Respondent was obviously well aware of Complainants' trademark rights at the time of registering the disputed domain name. This is supported by the fact that Respondent is offering purported TIFFANY branded jewelry for sale on the website located at the disputed domain name.
The submitted evidence of Respondent's website at the disputed domain demonstrates that Respondent is deliberately trading off the goodwill associated with Complainants' marks and Internet traffic intended for Complainant's website. Such use evidences Respondent's bad faith.
The Panel finds that Respondent has registered and used the domain names in bad faith.
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 <mytiffanyworld.com> be transferred to Complainants.
Lynda J. Zadra-Symes
Dated: March 20, 2009