WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tiffany (NJ) LLC and Tiffany and Company v. Jack Gogle Case No. D2009-0188 1. The Parties
Complainants are Tiffany (NJ) LLC and Tiffany and Company, each of the United States of America (U.S.A.), represented by Arnold & Porter, U.S.A.
Respondent is Jack Gogle of the U.S.A. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (“Tucows”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on February 12, 2009. On February 13, 2009, the Center transmitted by email to Tucows a request for registrar verification in connection with the disputed domain name. On February 13, 2009, Tucows transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing the contact details, and confirming other details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 12, 2009.
The Center appointed Debra J. Stanek as the sole panelist in this matter on March 18, 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. 4. Factual Background
Complainant Tiffany (NJ) LLC is the owner of, and Complainant Tiffany and Company is the exclusive licensee and user of, the TIFFANY trademark. Complainant Tiffany (NJ) LLC owns a United States federal trademark registration for the mark TIFFANY in the U.S.A. for, among other things, decorative art objects, jewelry, and watches.
The disputed domain name was registered in November 2007. The site describes itself as a “Tiffany jewelry store” that offers for sale a variety of “Tiffany & Co” jewelry. 5. Parties' Contentions A. Complainants
Complainant Tiffany (NJ) LLC is the owner of, and Complainant Tiffany and Company is the exclusive licensee and user of, the TIFFANY trademark.
For over 170 years, Tiffany has achieved recognition for its high quality goods, including jewelry, silver, china, glassware, decorative objects, crystal and clocks, under the trademark and trade name TIFFANY, among other related marks.
Complainant Tiffany (NJ) LLC owns several United States federal trademark registrations for the mark TIFFANY, including one issued in 1920. TIFFANY marks have long been world famous, and the public associates the TIFFANY marks exclusively with high quality items marketed by Complainant Tiffany and Company.
One or both of the Complainants have registered domain names that include the TIFFANY mark, including and , which direct visitors to the official website at “www..”
One or both of the Complainants allow TIFFANY products to be sold only through retail outlets owned or operated by them, including the official website, or through a limited number of boutiques located in certain stores.
Respondent registered the domain name and maintains an active website where he offers for sale, at a fraction of the cost of genuine TIFFANY jewelry products, items of jewelry, such as bracelets, pendants, earrings, etc., bearing one or more of the TIFFANY marks. These items, though bearing the TIFFANY mark, are counterfeit. Respondent's website includes such claims as:
- “All our Tiffany & Co jewelries are made guaranteed”
- “With our affordable prices, you are now able to pick out Tiffany & Co rings for every occasion.”
- “Tiffanyin is your best Tiffany & Co Sliver [sic] Jewelry online store. ALL our items are sterling silver made guaranteed.”
Complainants have never sold or permitted the sale of genuine Tiffany merchandise to or through Respondent. Elsewhere, Respondent ‘s website states that the jewelry offered is “Tiffany inspired” or Tiffany style.” 1. The Domain Name is Identical or Confusingly Similar to the TIFFANY Marks.
The domain name is identical or confusingly similar to the TIFFANY mark.
The domain name incorporates the TIFFANY mark in its entirety. The adaptation created by the addition of generic words does not prevent a finding of confusing similarity. 2. Respondent Has No Legitimate Interest or Rights in the Domain Name.
There is no doubt that Respondent has no rights or legitimate interests in the domain name.
Respondent is using the world famous TIFFANY mark and could not have legitimately chosen it unless he was seeking to create an impression with one or both Complainants.
Respondent has used the domain name to advertise counterfeit TIFFANY products. Complainants have never sold or permitted the sale of genuine TIFFANY products to or through Respondent. That use is not a bona fide offering of goods or services and does not establish any legitimate interest in the domain name.
Respondent has never been known by the domain name. 3. Respondent Registered and Is Using the Domain Name in Bad Faith.
There is no doubt that Respondent registered and is using the domain name in bad faith.
Respondent registered the domain name so with knowledge of Complainants' rights in the TIFFANY marks because Respondent‘s website purports to sell “Tiffany” jewelry. Further, Respondent has constructive notice of the TIFFANY mark by virtue of the federal and foreign registrations for the TIFFANY Marks.
Respondent‘s selection of a domain name that wholly incorporates the TIFFANY mark cannot be a coincidence. Instead, it is more probable than not that the Respondent‘s intention in registering it was to create confusion with the TIFFANY mark and also with Complainant‘s famous name and domain name.
Respondent's use of the domain name in connection with products sold under the “Tiffany” name without Complainants' authorization or consent is an effort to attract, for commercial gain, visitors to the website by creating a likelihood of confusion with the TIFFANY mark.
Respondent‘s use of the domain name also creates “initial interest confusion,” which is further evidence of Respondent‘s bad faith registration and use. B. Respondent
Respondent did not reply to Complainants' contentions. 6. Discussion and Findings A. Procedural Matters: Multiple Complainants
The Complaint identifies two Complainants: Tiffany (NJ) LLC and Tiffany and Company. While Complainant Tiffany (NJ) LLC owns the cited federal trademark registrations, Tiffany and Company is its exclusive licensee.
Neither the Policy nor the Rules provide for multiple Complainants. However, in some cases, panels have determined that the identified complainant did not demonstrate the requisite ownership or control of the mark at issue. In other cases, panels have determined that the complainant was properly acting on behalf of its affiliates. There is no settled practice as to whether affiliates should, or must, join in a complaint. In the absence of a uniform practice, the Panel accepts the designation of the parent company, Tiffany (NJ) LLC and its exclusive licensee as Complainants. However, in the Panel's view, such designations are not (and ought not to be) appropriate in all cases. Further, even where multiple complainants are appropriate, the failure to distinguish among the complainant entities, can, as we shall see below, present other issues. See Section 7, below. B. Substantive Discussion
In order to prevail, Complainants must prove:
(i) The domain name is identical or confusingly similar to Complainants' TIFFANY mark.
(ii) Respondent has no rights or legitimate interest in the domain name.
(iii) The domain name was registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent ‘s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent ‘s bad faith registration and use, see Policy, paragraph 4(b).
Even if a respondent has not answered the Complaint, a default does not automatically result in a finding for the complainant. Rather, the complainant continues to have the burden of establishing that it is entitled to relief. The Panel may, however, draw such inferences from a respondent‘s default as it considers appropriate. See paragraph 14(b) of the Rules. 1. Identical or Confusingly Similar
Complainants have established their rights in the mark TIFFANY by virtue of the evidence of the United States federal trademark registration.
The disputed domain name is not identical to Complainants' mark. However, it includes the TIFFANY mark in its entirety and follows it with the term “in.” The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark, but does not agree that such a finding is or should be automatic. Here, the addition of “in” after the mark (as well as the addition of the generic top-level domain “.com”, which is not relevant for these purposes), though creating an odd juxtaposition, does not effectively differentiate or distinguish the domain name from the TIFFANY mark, which remains the dominant portion of the domain name.
Accordingly, the Panel finds that Respondent‘s domain name is confusingly similar to a mark in which Complainants have rights. 2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainants may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples by which a respondent might demonstrate rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Under these circumstances, it does not appear that Respondent is engaged in any legitimate use of the domain name. There is no reason to believe, from the WhoIs record or otherwise, that Respondent is known by the domain name1 and the use of the website to offer jewelry2 is not legitimate.
The Panel finds that Complainants have made a prima facie showing as to this element. Respondent, who has not replied, has not rebutted this showing.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name. 3. Registered and Used in Bad Faith
Complainants must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor, (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [the respondent‘s] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent‘s] web site or location or a product or service on [the respondent‘s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainants ‘ rights in the TIFFANY mark, which are well established, long predate Respondent ‘s registration and use of the domain name. The use of the website to offer jewelry bearing a TIFFANY mark, as well as to purport to offer goods that are “Tiffany inspired” shows that Respondent actually knew of Complainants' TIFFANY mark and intended to attract those seeking Complainants and their products.
Under these circumstances, the Panel finds that Complainants have established that Respondent has registered and is using the domain name in bad faith. 7. Decision
One consequence of Complainants' use of the term “Tiffany” to refer indiscriminately to both entities, Tiffany (NJ) LLC and Tiffany and Company, is to render the requested remedy ambiguous: “Tiffany requests that the Administrative Panel appointed in this administrative proceeding issue a decision that the [disputed domain name] be transferred to Tiffany.” Complaint, paragraph 50.
In the absence of a specific designation by Complainants, and 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 be transferred to Complainant Tiffany (NJ) LLC.
Debra J. Stanek
Sole Panelist
Dated: March 31, 2009
1 The Panel rejects the Complainants' sweeping assertion that the mere use of “Tiffany” in a domain name “is evidence that [the registrant] has no rights or legitimate interest in the [domain name].” Tiffany has been a popular given name and has other legitimate connotations that are not related to Complainants and their mark.
2 Although asserting that the products offered on the “www.” website are counterfeit, the Complaint, verified by outside counsel, includes no evidence on that point.
Full & Egal Universal Law Academy