Complainants are Tiffany (NJ) LLC of New Jersey, United States of America, and Tiffany and Company of New York, United States of America, represented by Arnold & Porter LLP, United States of America.
Respondent is Tiffany Store Net of California,United States of America.
The disputed domain name <tiffanystore.net> (the “Domain Name”) is registered with Tucows, Inc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2009. On April 2, 2009, and again on April 9, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2009, the Registrar 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 April 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 8, 2009.
The Center appointed Dana Haviland as the sole panelist in this matter on May 27, 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 is the owner, and Complainant Tiffany and Company is the exclusive licensee and user, of several United States registered trademarks dating back as far as 1920, as well as numerous foreign trademarks, for the TIFFANY trademark and the TIFFANY & CO. trademark (together, the “TIFFANY Mark”). Complainant sells jewelry, silver, china, glassware and other items under the TIFFANY Mark through its own retail stores and websites, and through designated Tiffany boutiques at certain other retail stores.
Respondent registered the Domain Name on December 3, 2006. At the time of filing of the Complaint, as evidenced by Complainant's submission of copies of pages of the Domain Name website, the Domain Name was being used for an active website selling jewelry, described throughout the Domain Name website as “TIFFANY & CO. classic sterling silver jewelry.” Each page of Respondent's “www.tiffanystore.net” website displayed the heading “TIFFANY STORE The World (sic) Most Famous Jewelry Collection.” Many of the products offered for sale on the Domain Name website were stated to be “Manufactured by: Tiffany & Co.”
Complainant contends that the Domain Name is identical or confusingly similar to the TIFFANY Mark in which Complainant asserts prior rights, that Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
Under the Policy, in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent's domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a)
Complainant has provided evidence of its prior rights to the TIFFANY Mark, used by Complainant and its licensees for retail sale of jewelry and other goods. The Domain Name incorporates the Complainant's mark in its entirety, adding only the generic word “store” and the .net suffix.
Complainant's well-known TIFFANY Mark is the dominant portion of the Domain Name, which is therefore likely to be confusingly similar to the mark. Tiffany (NJ) LLC and Tiffany and Company v. Jack Gogle. Neither the inclusion of the descriptive word “store” nor the addition of the suffix “.net” to the Complainant's mark precludes a finding that the Domain Name is confusingly similar to the TIFFANY Mark. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (domain name confusingly similar because “Neither the addition of an ordinary descriptive word...nor the suffix ‘.com' detract from the overall impression of the dominant part of the [domain] name …, namely the trademark SONY); Societe AIR FRANCE v. Ted Chen, WIPO Case No. D2007-0528 (domain names held to be confusingly similar because “The Complainant's AIR FRANCE trademark is well-known. The addition of a descriptive word to this mark … fails to distinguish the domain names from the mark…, and likewise the generic top level domain “.com” may be disregarded as wholly generic”). On the contrary, the addition of the word “store” increases the likelihood of confusion with the TIFFANY Mark, as the consumer may be led to assume that Complainant has established or sponsored this online store for sale of its trademarked goods.
For these reasons, the Panel finds that the Domain Name in this case is confusingly similar to the TIFFANY Mark in which Complainant has rights, and that Complainant has therefore established the first element of its claim, pursuant to paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is 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.
Complainant alleges that it has not licensed or otherwise authorized Respondent to use its TIFFANY Mark in the Domain Name or any other manner, that Respondent is not using the Domain Name for a bona fide offering of goods or services or for any legitimate noncommercial or fair use, since Respondent is not authorized to sell goods using Complainant's mark, and that Respondent is not commonly known by the Domain Name.
According to the exhibits attached to the Complaint, Respondent's website claims to be selling identical goods to those manufactured by or for Complainant, but acknowledges that Respondent is not an authorized reseller of Tiffany products:
All of our merchandises are authentic and brand new. We only directly import from the same factory through a secret tunnel to bring you authenticity merchandises and incredible prices. Only one difference is we do not have the authentic certificate (i.e. Receipt of Tiffany&Co.). Without it, you can not get any after-sale-services from Tiffany&Co., that's why low low price can be. Please be advised if you want the certificate, YOU CAN NOT SAVE A PENNY! You have to go to shop authorized stores or official web site: www.tiffany.com. We pride ourselves on the quality and consistency of the product and service we provide thousands of our customers since 1998. …
All of our merchandises are come with Tiffany & Co. TM pouch, blue box, gift bag and silver care card.”
Respondent has not submitted any reply to the Complaint. As noted in CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201, it is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute, and so it is sufficient for the complainant to make a prima facie showing on this issue and shift the burden of going forward to the respondent. Thus, “where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent”. Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416. Respondent in this case has failed to assert any right or legitimate interest in the Domain Name, however, and has presented no evidence in opposition to Complainant's assertions in this regard.
The Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Respondent's website disclaimer as to the lack of any relationship to or authorization from Complainant for sale of jewelry similar to or even identical to Complainant's jewelry does not make Respondent's offering of goods and services bona fide under paragraph 4(c)(i) of the Policy. In this regard, it is immaterial whether the goods may be “counterfeit”, as Complainant contends (without submitting evidence on the point), or “authentic” or “from the same factory”, as Respondent's website asserts. In either event, as evidenced by Complainant's submission of pages from Respondent's website, Respondent's use of Complainant's famous trademarks in the Domain Name and throughout the Domain Name website is a clear attempt to confuse consumers and divert them to Respondent's competing website. Such use does not constitute a bona fide, legitimate use of the Domain Name. See Tiffany (NJ) LLC, Tiffany and Company v. Whois Privacy Protection Service, Inc. and Ning Zhou, WIPO Case No. D2009-0189.
For these reasons, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Complainant has therefore satisfied the second element of its claim in accordance with paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4 (a)(iii) above:
(i) circumstances indicating that the registrant 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 registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
Only paragraph 4(b)(iv) of the Policy is at issue here. Respondent had to know of Complainant's well-known trademark when it registered and used the Domain Name. See Tiffany and Company, Tiffany (NJ) Inc. v Janet White, WIPO Case No. D2009-0188. Indeed, Respondent has used both the TIFFANY and TIFFANY & CO. trademarks on the Domain Name website to describe the jewelry offered there for sale. The Panel finds on the evidence that Respondent registered and used the Domain Name to attract Internet users to Respondent's competing website for commercial gain by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website and the products sold through it.
Under paragraph 4(b)(iv) of the Policy, these circumstances constitute evidence that the Domain Name was registered and is being used in bad faith. See Tiffany (NJ) LLC, Tiffany and Company v. Whois Privacy Protection Service, Inc. and Ning Zhou, supra. Complainant has therefore satisfied the third element of its claim, pursuant to paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and because the Complaint identifies Complainant Tiffany (NJ) LLC as the owner of the TIFFANY mark, the Panel orders that the domain name <tiffanystore.net> be transferred to Complainant Tiffany (NJ) LLC.
Dated: June 9, 2009