WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tiffany and Company, Tiffany (NJ) Inc. v. Jin Liang, Liang Jin, Selina Chow and Alan Dolton
Case No. D2010-2200
1. The Parties
The Complainants are Tiffany and Company of New York, United States of America and Tiffany (NJ) Inc. of New Jersey, United States of America (the “Complainant”), represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondents are Jin Liang of Nanjing, Jiangsu, the People’s Republic of China; Liang Jin of Hangzhou, Zhejiang, the People’s Republic of China and Selina Chow and Alan Dolton of Hong Kong, SAR of the People’s Republic of China (the “Respondent”).
2. The Domain Names and Registrars
The disputed domain names <intiffany.com>, <tiffanytiffany.com>, <tiffanyus.com> and <tiffany5.com> are registered with GoDaddy.com, Inc. The disputed domain names <newtiffany.com> and <tiffanymart.com> are registered with Bizcn.com, Inc. (all six together the“Domain Names”).
3. Procedural History
The original Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010 in connection with four of the Domain Names <tiffanytiffany.com>, <tiffanyus.com>, <newtiffany.com> and <tiffanymart.com>. On December 16, 2010, the Center transmitted by email to GoDaddy.com, Inc. and Bizcn.com, Inc. a request for registrar verification in connection with these four domain names. On December 17, 2010, Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that Jin Liang is listed as the registrant for the domain names <newtiffany.com> and <tiffanymart.com> and providing the contact details. Bizcn.com, Inc. also confirmed that the language of the registration agreements for the domain names <newtiffany.com> and <tiffanymart.com> is Chinese. On December 18, 2010 , GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Liang Jin is listed as the registrant for the domain names <tiffanyus.com> and <tiffanytiffany.com> and providing the contact details.
On December 22, 2010, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding of the domain names <newtiffany.com> and <tiffanymart.com>. On December 23, 2010, the Complainant submitted a request that English be the language of the proceeding. On the same day, the Complainant filed an amended Complaint requesting to add the disputed domain names <tiffany5.com> and <intiffany.com> to the current proceedings. The Respondent did not comment on the language of the proceeding by the specified due date.
On December 28, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with two of the Domain Names <tiffany5.com> and <intiffany.com>. On December 28, 2010 , GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Selina Chow is listed as the registrant for the domain name <tiffany5.com> and Alan Dolton is listed as the registrant for the domain name <intiffany.com> and providing the contact details.
The Center verified that the Complaint together with the amended Complaint (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”).
On December 29, 2010, the Center informed the parties that it had taken note that the present case involves six domain names, with seemingly distinct registrants, as well as of the Complainant’s submissions in the Complaint regarding Respondent identity, commonality and requested consolidation.
The Center further noted that there would appear to be at least prima facie grounds sufficient to warrant putting the Complainant’s request for consolidation before a Panel. The Center also confirmed that a copy of the Complaint will be duly forwarded to the contact information of all identified registrants, and a response (or responses) will be accepted by the Center from any who wish to submit a reply to the Complaint, and placed before the panel for consideration in due course.
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 December 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2011.
On January 19, 2011, the Center received an email communication from an Alan enquiring “If all products removed from website. Does it affect the case decision? How long does it take to process and transfer away the domain?” On January 20, 2011, the Center acknowledged receipt of this email.
The Center appointed Karen Fong as the sole panelist in this matter on January 26, 2011. 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.
4. Factual Background
The Complainant is a company based in the United States. The Complainant and its predecessors in title have used the marks TIFFANY and TIFFANY & CO (the “TIFFANY Trade Marks”) for over 170 years in relation to jewelry, silverware, perfumes, accessories, cutlery, glass tableware, porcelain, gift and fancy goods. Tiffany products are sold in retail store locations worldwide as well as through the Complainant’s websites. The Complainant owns numerous registrations for the TIFFANY Trade Marks around the world including United States, China and Hong Kong, SAR of China. The Complainant also owns numerous domain names including <tiffany.com>, <tiffany.cn> and <zh.tiffany.com>.
The Domain Names were registered between March 2009 and November 2010 and the following were connected to active websites at the time of the filing of the Complaint: <n ewtiffany.com>, <tif fany5.com>, <tiffanymart.com> and <intif fany.com> ( the “Websites”). On the Panel’s review of the Websites, all but <tiffanymart.com> were still active websites. The following domain names are not connected to active websites <tiffanytiffany.com> and <tiffanyus.com>. The Websites appear to be or have been selling Tiffany merchandise that are possibly counterfeit as the Respondent is not authorized to sell Tiffany products nor are official merchandise sold at a discount as is the case on the Websites. The Websites bear the TIFFANY Trade Marks and also displays images which belong to the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the TIFFANY Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and control of a single, unknown owner/registrant.
The Complainant believes that the WhoIs information for all or some of the Domain Names is fictitious. The basis of its belief that the registrants are related and under management and control of a single unknown owner/registrant are as follows:
1. The registrant of two of the domain names <newtiffany.com> and <tiffanymart.com> is Jin Liang with an address in Jiangsu, China.
2. The registrant of the other two domain names <tiffanytiffany.com> and <tiffanyus.com> is Liang Jin with an address in Zhejiang, China.
3. The registrant of the fifth domain name <tiffany5.com> is Selina Chow with an address in Hong Kong.
4. Liang Jin is also the registrant of the domain name <tiffany.im>. The website connected to <tiffany.im> refers to the <tiffany5.com> website in the “About Us” page which is evidence that <tiffany.im> and <tiffany5.com> are owned and/or operated by the same person or company.
5. The registrant of the sixth domain name <intiffany.com> is Alan Dolton with an address in Hong Kong. The websites connected to <intiffany.com> and <tiffany5.com> contain identical language which indicates common control by the same person or company.
6. The Websites all use common phrases and have similar layouts.
7. Jin Liang and Liang Jin is probably the same person as it is common practice in the Chinese language for a person’s surname to be listed first as opposed to the Western custom of listing a surname last.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Preliminary Procedural Issues
(i). Consolidation of Proceedings
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings BV v Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. 2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondent’s cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Complainant’s well-known TIFFANY mark in its entirety. The two domain names without an active website <tiffanyus.com> and <tiffanytiffany.com> are both registered to Liang Jin. Liang Jin is connected to <tiffany5.com> as evidenced in the “About Us” section of the website at <tiffany.im> which is also owned by Liang Jin. <tiffany5.com> is connected to <intiffany.com> as the same language is used on a section of both websites. Both contain the same grammatical errors which is an indication that those behind the website are connected. <newtiffany.com> and <tiffanymart.com> are registered in the name of Jin Liang. The Panel accepts that it is common in the Chinese language for surnames to be placed before the first name. On its own, this point would not be sufficient to establish that Jin Liang and Liang Jin is one and the same person as alleged by the Complainant. The Panel does note however, that the image in the “About Us” page of the website connected to <newtiffany.com> is identical to that in the “About Us” page of <tiffany5.com>. The language used on both pages is also identical except for the reference to the names of the websites. The layout and language of the Websites have many similarities. As none of these registrants or the Websites have been authorized by the Complainant and the Complainant’s official merchandise is never sold at a discount, it is likely that the merchandise sold through the Websites are counterfeit. This reflects that the Complainant has been the target of common conduct based on the registration and use of at least four of the Domain Names and such conduct clearly affects the Complaint’s rights in the TIFFANY Trade Marks.
The Respondent had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to the common ownership or control of either Jin Liang or Liang Jin. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
(ii). Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from Bizcn.com, Inc, the language of the registration agreement in relation to <newtiffany.com> and <tiffanymart.com> is Chinese. There is no issue with the other disputed domain names registered with GoDaddy.com, Inc. as the language of the registration agreement is English.
The Complainant submits in paragraph 53 of the Complaint that the language of the proceeding should be English as the two disputed domain names are in English, the websites hosted at the domain names are in English and the products are advertised to and can be shipped to the United States. The other four domain names belonging to the Respondent are registered with GoDaddy.com, Inc. which has English as the language of the registration agreement. Further, on January 19, 2011, an individual named Alan sent an email to the Center in English in relation to this case. These factors indicate that the Respondent has a working knowledge of English. In response to the Center’s email of December 22, 2010, regarding the language of the proceeding of the domain names <newtiffany.com> and <tiffanymart.com>, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainant’s submissions in paragraph 53 of the Complaint regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts the evidence filed by the Complainant that TIFFANY is a well-known trade mark.
The Complainant’s registered trade mark, TIFFANY is the dominant portion of the Domain Names. The addition of the descriptive/generic terms “in”, “mart”, “new” and “5”, the geographical term “us” and a repeat of the mark “tiffany” does nothing to minimise the risk of confusion. Moreover, for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant alleges that it has not licensed or otherwise authorized the Respondent to use its TIFFANY Trade Marks in the Domain Names or any other manner, the Respondent is not commonly known by the Domain Names and since the TIFFANY Trade Marks are so well-known, the Respondent’s purpose of registering and using the Domain Names which include the Complainant’s registered trade mark in its entirety was to trade on the Complainant’s renown to lure consumers to the Websites to sell unauthorised and possibly counterfeit merchandise. Further even though the Websites have links to websites selling legitimate Tiffany products, the Respondent has not fulfilled the criteria set out in Oki Data Americas, Inc. v. ASD, Inc. , WIPO Case No. D2001-0903, such that the offering of such goods would be considered bona fide and thus giving it a legitimate interest in the Domain Names.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s marks when it registered the Domain Names. The fact that the Domain Names incorporate the Complainant’s well-known trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names is in bad faith. The products offered for sale on the Websites are likely to be counterfeit Tiffany products. There is a clear intention to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Websites are and the products sold on them are authorised or endorsed by the Complainant. This is clearly bad faith under paragraph 4(b)(iv) of the Policy.
With respect to the domain names, <tiffanytiffany.com> and <tiffanyus.com> which did not have active websites at the time the Complaint was filed, the consensus view is that the lack of active use of the domain name does not prevent a finding of bad faith. Examples of circumstances that can indicate bad faith include the complainant having a well-known trade mark, no response to the complaint, concealment of the identity and the impossibility of conceiving good faith use of the domain name. The Panel concludes that as TIFFANY is a well-known trade mark, it is impossible for anyone unconnected to the Complainant to use these two domain names in good faith. The Respondent did not file a response to the Complaint and also the identity of the Respondent provided in the WhoIs is likely to be fictitious. As such, taking into account all the circumstances, the Panel finds that the Domain Names were registered and are being used 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 Names <intiffany.com>, <newtiffany.com>, <tiffanymart.com>, <tiffanytiffany.com>, <tiffanyus.com> and <tiffany5.com> be transferred to the Complainant.
Dated: February 10, 2011