WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tiffany (NJ) Inc., Tiffany and Company v. Herbert Diaz Case No. D2008-1635 1. The Parties
The Complainants are (1) Tiffany (NJ) Inc., of New Jersey United States of America; and (2) Tiffany and Company of New York, United States of America, both represented by Arnold & Porter.
The Respondent is Herbert Diaz, of Lince Lim, Peru. 2. The Domain Names and Registrar
The disputed domain names and are registered with N, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2008. On October 29, 2008, the Center transmitted by email to N, LLC a request for registrar verification in connection with the disputed domain name. On November 3, 2008, N, LLC transmitted by email to the Center its verification response that the Respondent is listed as the registrant of the disputed domain name and providing the contact details and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amended Complaint on October 28, 2008. The Center verified that the Complaint together with the amended 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 November 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 26, 2008.
The Center appointed David Perkins as the sole panelist in this matter on December 10, 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. 4. Factual Background 4.A The Complainants
4.A.1 The First Complainant, Tiffany (NJ) Inc., is the proprietor of the TIFFANY trademark and the Second Complainant, Tiffany and Company, is the exclusive licensee and user of that trademark.
4.A.2 The Second Complainant, (Tiffany and Company) has for more than 170 years sold under the TIFFANY trademark high quality goods, including jewelry, silver, china, glassware, decorative objects, crystal and clocks. The TIFFANY trademarks
4.A.3 The First Complainant is the proprietor of the following registered trademarks:
Country Reg. No. Mark Classes Application / Registration Dates
United States of America
133,063
TIFFANY
14
Application January 9, 1920 Registration July 6, 1920
United States of America
1,228,409
TIFFANY
14
Application April 4, 1981 Registration February 22, 1983
United States of America
23,573
TIFFANY & CO.
14
Application July 29, 1893 Registration September 5, 1893
United States of America
137,723
TIFFANY & Co. (Stylised)
30
Application February 10, 1920 Registration November 30, 1920
United States of America
1,228,189
TIFFANY & CO.
8 & 14
Application April 9, 1981 Registration February 22, 1983
United States of America
1,251,356
TIFFANY & CO.
42
Application February 16, 1982 Registration September 13, 1983
People's Republic of China
815,305
TIFFANY
14
Registered February 14, 1996
People's Republic of China
3,966,131
TIFFANY & CO.
14
Registered September 21, 2006
Hong Kong, SAR of China
1989B1691AA
TIFFANY
8,14 & 21
Registered November 3, 1987
Hong Kong, SAR of China
2001B07883AA
TIFFANY & CO. (with blue box)
8,14 & 21
Registered December 21, 1996
Taiwan, Province of China
260,943
TIFFANY
14
Registered October 16, 1984
The US registrations claim first use in commerce in 1863. Complainants' use of the TIFFANY mark
4.A.4 The Complainants say that over the years they have spent millions of US dollars advertising and promoting jewelry and specialty gift items under the TIFFANY trademark. In the past decade, sales of goods bearing or marketed under the TIFFANY mark have exceeded USD19.4 billion at retail. During that same decade the Complainants spent USD1.1 billion in advertising and promoting its TIFFANY mark around the world, including the People's Republic of China. In sum, the Complainants assert that TIFFANY is a well-known or famous trademark, citing decisions under the Policy which have characterized the TIFFANY trademark as such. For example, Tiffany and Company, Tiffany (NJ) Inc v. Janet White,WIPO Case No. D2003-0456 and Tiffany (NJ) Inc., Tiffany and Company v. Tiffany Asia,WIPO Case No. D2008-1456.
4.A.5 The Complainants also permits TIFFANY goods to be sold only in retail outlets which they own or operate or through Tiffany boutiques in certain high-end reputable stores. Amongst their retail outlets, the Complainants have 12 stores or boutiques in the Peoples Republic of China. The TIFFANY domain names
4.A.6 The Complainants are the proprietors of several domain names including and , which resolve to its website. Printouts from these websites are exhibited to the Complaint which illustrate jewelry, watches and other items. 4.B The Respondent
4.B.1 In the absence of a Response, all that is known of the Respondent is that which appears from the Amended Complaint.
4.B.2 The two disputed domain names were created in August 2008. Both resolve to virtually identical websites (predominantly in Chinese language) and print outs from those websites are exhibited to the Amended Complaint. The websites are almost identical to the Complainant's official website, including use of the TIFFANY trademark, its copyrighted photographs and Tiffany's registered colour blue.
4.B.3 The Respondent's websites claim affiliation to an entity known as the “Tattoo Group” and offer a “bonus investment scheme”. In exchange for receiving private data, including bank information, from consumers, the Respondent's websites offer permission to purchase TIFFANY jewelry at a substantial discount and a 1.68% guaranteed daily rate of return for 24 weeks on money deposited with either or . The deposit is necessary to qualify for the discount.
4.B.4 These particulars appear from a Declaration from Seagull Song, an attorney licensed to practice law in China and a consultant to the attorneys representing the Complainants, Arnold & Porter LLP. Mr Song's affidavit contains a translation into English from the Chinese language websites to which the disputed domain names resolve. 5. Parties' Contentions 5.A The Complainants Identical or Confusingly Similar
5.A.1 The Complainants point to the fact that the disputed domain names incorporate the TIFFANY mark in its entirety, each with the descriptive prefix “nice”. In that respect, they cite cases decided under both the US Federal and State law and under the Policy where such use of a trademark has been held to amount, respectively, to trademark infringement under US law and to confusing similarity under the Policy. Confusing similarity in such circumstances has been held to apply particularly where, as in this case, the Complainant's trademark is a well-known mark: Heineken Brouwerijen B.V. v. Mark LottWIPO Case No. D2000-1487.
5.A.2 In assessing confusing similarity, the Complainants point to cases decided under the Policy where addition of the generic TLD as in this case, “.com” and “.net”, is said to be irrelevant. Rights or Legitimate Interests
5.A.3 The Complainants say that the Respondent is neither licensed nor otherwise authorized to use the TIFFANY trademark. The Respondent is not an authorized reseller of TIFFANY merchandise either.
5.A.4 Nor, the Complainants say, is there any evidence that the Respondent is commonly known by either of the disputed domain names. Accordingly, paragraph 4(c)(ii) of the Policy cannot apply in this case.
5.A.5 As to use of the disputed domain names in connection with a bona fide offering of goods (paragraph 4(c)(i) of the Policy), the goods offered on the websites to which those domain names resolve are falsely offered as genuine TIFFANY merchandise when they are not. They are, the Complainants say, counterfeits. Use of domain names confusingly similar to the Complainant's trademark to sell counterfeit goods which are falsely offered as genuine TIFFANY goods is not, the Complainants say, bona fide use.
5.A.6 Moreover, the “bonus investment scheme” advertised on the Respondent's website, which is described in paragraph 4.B.3 above, is not bona fide and has all the indications, the Complainants say, of a fraudulent scheme.
5.A.7 As to paragraph 4(c)(iii) of the Policy, the Respondent's use of the disputed domain names is neither noncommercial, nor fair. It is plainly both commercial and designed to mislead consumers into believing that the goods offered on the websites are genuine TIFFANY merchandise and are authorized by the Complainants when neither is true. Registered and Used in Bad Faith
5.A.8 First, the Complainants say, it is inconceivable that when registering the disputed domain names in August 2008, the Respondent was unaware of the Complainants' ownership of the famous TIFFANY trademark.
5.A.9 Such obvious registration in bad faith is, the Complainants go on to say, demonstrated by the use to which the disputed domain names are being put. That is, as explained above, to sell counterfeit TIFFANY merchandise. Here, as described in paragraph 4.B.2 above, the Respondent's websites are to all intents and purposes identical to the Complainants' official TIFFANY website. On the evidence, the Complainants say the Respondent's conduct clearly falls within paragraph 4(b)(iv) of the Policy. They support this with reference to numerous cases where similar facts have been held to constitute bad faith registration and use under the Policy.
5.A.10 In addition, the Complainants assert that use by the Respondent of a privacy service for the disputed domain name is also indicative of bad faith, the inference being that the Respondent has “something to hide”. Again, decisions under the Policy to this effect are cited.
5.A.11 A further bad faith use is demonstrated, the Complainants say, by the fraudulent scheme described by Mr Song in his declaration and summarized in paragraph 4.B.3 above. Again, the Complainants cite decisions under the Policy where use of domain names as part of a fraudulent scheme has been held to constitute a bad faith use. 5.B The Respondent
As noted, no Response has been filed. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the disputed domain names.
6.3 Paragraph 4(b) of the Policy sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainants have rights in the registered trademark TIFFANY. That mark has been in use since 1863 and was first registered in the United States of America in 1920. It is by any standards a famous and well-known trademark.
6.6 The use of the descriptive prefix “nice” in both the disputed domain names does nothing to disguise their confusing similarity with the world renowned TIFFANY trademark.
6.7 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 In the absence of a Response, there is no evidence to demonstrate that the Respondent could satisfy any of the circumstances provided for in paragraph 4(c) of the Policy.
6.9 Indeed, the evidence is overwhelmingly in favour of the Complainants. The use to which the disputed domain names are being put is summarized in paragraphs 4.B.2 and 4.B.3 above. Use of those domain names to resolve to websites, which mimic the official TIFFANY website, offer counterfeit TIFFANY merchandise and also offer a “bonus investment scheme” having all the appearances of a fraudulent scheme, cannot by any stretch of the imagination be regarded as a bona fide, legitimate noncommercial or fair use. See also, Tiffany (NJ) Inc., Tiffany and Company v. Tiffany Asia, WIPO Case No. D2008-1456.
6.10 In the circumstances, it is plain that the Respondent can have no rights or legitimate interest in either of the disputed domain names. Accordingly, the Complaint satisfies the second requirement of the Policy under paragraph 4(a)(ii). Registered and Used in Bad Faith
6.11 As so often is the case where confusing similarity and a lack of rights or legitimate interest have been found, registration and use in bad faith as a consequence of both follow. This case is no exception.
6.12 With a trademark as well known internationally as TIFFANY, it is inconceivable that the disputed domain names could have been created in ignorance of that mark. This is confirmed when regard is had to the use to which those domain names have been put.
6.13 That use is an undisguised attempt to trade off the considerable reputation of the TIFFANY trademark and brand and in so doing to create a likelihood of confusion among unwary Internet users with that mark. The Respondent is neither licensed nor otherwise authorized to use the TIFFANY mark. Nor is the Respondent an authorized reseller of TIFFANY merchandise. The use to which the disputed domain names is being put, reiterated in paragraph 6.9 above, falls fair and square within the category of bad faith use set out in paragraph 4(b)(iv) of the Policy.
6.14 Accordingly, the Complaint satisfies the twin requirements of paragraph 4(a)(iii) of the Policy. The Panel would only qualify this decision in relation to the Complainants' bad faith assertion based on the Respondent's use of a privacy service with respect to one of the disputed domain names, paragraph 5.A.10 above. Despite the cases cited by the Complainants, this Panel believes that it is now generally accepted that use of a privacy service may be for entirely legitimate reasons. Hence, such use cannot necessarily always be said to be an indicia of bad faith by the domain name registrant. However, for the reasons set out above, registration and use of the disputed domain names in this case can only be regarded as being in the most blatant bad faith and, accordingly, reliance on the additional ground advanced by the Complainants in paragraph 5.A.10 above is unnecessary. 7. Decision
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, and , be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: December 16, 2008
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