WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tiffany and Company, Tiffany (NJ) Inc. v. Janet White
Case No. D2003-0456
1. The Parties
The Complainants are Tiffany and Company of New York, United States of America; and Tiffany (NJ) Inc. of Parsippany, New Jersey, United States of America, represented by Dorsey & Whitney, LLP, United States of America (hereinafter referred to jointly and severally as "Complainant").
The Respondent is Janet White of Tampa, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tiffanysgiftstore.com> is registered with Network Solutions, Inc. (hereinafter referred to as "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") electronically on June 13, 2003, and received by the Center in hardcopy on June 16, 2003. On June 16, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On June 19, 2003, 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. 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 June 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 17, 2003.
The Center appointed M. Scott Donahey as the Sole Panelist in this matter on July 30, 2003. 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
Complainant is the owner and assignee of a number of registrations with the United States Patent and Trademark Office ("USPTO") for the marks TIFFANY and TIFFANY & CO. Complaint, Annex D. The earliest registration was issued on September 5, 1893, and most date back to 1920 or before. Id. Complainant has registered <tiffany.com>, which resolves to a website offering information regarding Complainantís goods and services and on which goods promoted and/or manufactured by Complainant are offered for sale.
Complainant is known throughout the United States and worldwide as a purveyor of quality jewelry and assorted luxury items. In 2002 Complainantís sales totaled $1.7 billion.
Respondent registered the domain name <tiffanysgiftstore.com> on May 15, 2001. Complaint, Annex A. The domain name at issue resolves to a website offering for sale a variety of goods, including some types of goods in competition with goods sold under the Complainantís registered trademarks. Complaint, Annex G.
Respondent has failed to respond to the Complaint.
5. Partiesí Contentions
Complaint contends that the domain name at issue is confusingly similar to trademarks in which Complainant has rights, 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.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel 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 Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel 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 rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has proved its rights in the trademarks TIFFANY and TIFFANY & CO. Since the domain name at issue incorporates the well-known trademark of Complainant, it is confusingly similar to Complainantís mark. Wal-Mart Stores v. MacLeod, d/b/a For Sale, WIPO Case No. D2000-0662, at 5.
B. Rights or Legitimate Interests
Complainant has in a credible way alleged and Respondent has failed to show that Respondent has any rights or legitimate interests in respect of the domain name at issue. This entitles the Panel to infer that Respondent has no rights or legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011.
C. Registered and Used in Bad Faith
Respondent had to know of Complainantís famous marks at the time that Respondent registered the domain name at issue. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Respondent is using the domain name to resolve to a website that offers for sale an assortment of products, many of which are products in connection with which Complainant has registered trademarks. Nowhere on the site is there a disclaimer that the site is not connected with Complainantís well-known enterprise or trademarks. InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076. Despite having been given proper notice of the Complaint, Respondent failed to appear and contest this proceeding.
Under the above listed circumstances, the Panel finds that Respondent has used the domain name at issue in an intentional attempt to attract Internet users to Respondentís website for commercial gain by creating a likelihood of confusion with Complainantís mark. Policy, Paragraph 4(b)(iv). Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue 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 <tiffanysgiftstore.com> be transferred to the Complainant.
M. Scott Donahey
Dated: August 7, 2003