WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tiffany (NJ) LLC, Tiffany and Company v. Whois Privacy Protection Service, Inc. and Ning Zhou Case No. D2009-0189 1. The Parties
The Complainants are Tiffany (NJ) LLC of New Jersey, United States of America (“USA”) and Tiffany and Company of New York, USA, represented by Arnold & Porter LLP of New York, USA.
The Respondents are Whois Privacy Protection Service, Inc. of Bellevue, Washington, USA and Ning Zhou of Nanjing, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on February 12, 2009, and in hard copy on February 16, 2009, against Whois Privacy Protection Service, Inc. of Bellevue, Washington, USA.
The Center transmitted its request for registrar verification to the Registrar by email on February 13, 2009. The Registrar replied the same day, stating that the Domain Name had been placed under locked status so as to prevent transfers or changes during this proceeding; confirming that its registration agreement was in English and required the registrant to consent to the jurisdiction of the courts located in Kings County, Washington, USA; and providing the contact details in respect of the registrant of the Domain Name held on its WhoIs database. These details identified the registrant as Ning Zhou of Nanjing, China.
The Center informed the Complainants by email of February 19, 2009, that the registrant identified by the Registrar differed from that named in the Complaint and invited the Complainants to submit an appropriate amendment to the Complaint. The Complainants submitted an amendment to the Complaint by email on February 24, 2009, adding Ning Zhou as a Respondent.
The Center verified that the Complaint together with the Amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on February 25, 2009. The notifications sent to the Respondents by email and in hard copy appear to have transmitted successfully. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 17, 2009. The Respondents did not file any Response and the Center notified the Respondents' default on March 18, 2009.
The Center appointed Jonathan Turner as the sole panelist in this matter on March 25, 2009. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint together with the Amendment to the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background
The First Complainant is the proprietor and the Second Complainant is the exclusive licensee of the trade mark TIFFANY, which has been registered in the USA and many other jurisdictions. This mark has been extensively used by the Complainants and their predecessors for over 170 years in respect of jewelry, silverware, china, glassware, decorative objects, clocks and other valuable goods.
The Domain Name locates a website which markets jewelry under the name “Tiffany & Co.” 5. Parties' Contentions A. Complainants
The Complainants contend that the Domain Name is confusingly similar to the mark TIFFANY in which they have registered rights. They point out that the Domain Name incorporates the entirety of the mark and differs from it only in the addition of the generic words “on sale” and the generic top level domain name suffix.
The Complainants submit that the Respondents have no rights or legitimate interests in respect of the Domain Name. They state that the jewelry offered for sale on the Respondents' website has almost certainly not been manufactured or authorized by the Complainants and is advertised at prices which are a fraction of those of genuine TIFFANY products. They also state that the Respondents have not been authorized by them to use the TIFFANY mark and have not been known by this name.
Finally, the Complainants allege that the Domain Name was registered and is being used in bad faith. They contend that the Respondents must have been aware of their rights to the mark when the Domain Name was registered, particular as the Respondents have directed it to a website advertising jewelry under the name “Tiffany & Co”. They also submit that the Respondents are using the Domain Name to attract Internet users to their website for commercial gain by creating a likelihood of confusion with their TIFFANY mark.
The Complainants seek a decision that the Domain Name be transferred to them. B. Respondents
As mentioned above, the Respondents did not reply to the Complainants' contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainants must prove (i) that the Domain Name is identical or confusingly similar to a mark in which they have rights; (ii) that the Respondents have no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondents' default in submitting a response as it considers appropriate. This includes the acceptance of plausible allegations of the Complainants which have not been disputed. A. Identical or Confusingly Similar
The Panel finds that the Complainants have registered rights in the mark TIFFANY.
The Panel further finds that the Domain Name is confusingly similar to this mark, from which it differs only in the addition of the descriptive words “on sale” and the generic top-level domain suffix. The Panel considers that many Internet users would suppose that the Domain Name locates a website of or connected to the Complainants offering their merchandise for sale.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel considers that the Respondents' use of the Domain Name does not constitute a bona fide offering of goods or services. Nor are they making legitimate or fair use of the Domain Name. On the contrary, the Panel finds on the evidence that they are using the Domain Name to divert Internet users by confusion with the Complainant's mark to their competing website where they offer for sale products not supplied by the Complainants under the name “Tiffany & Co.” which is itself confusingly similar to the Complainants' mark. Such use is not in good faith or legitimate or fair, and does not give rise to rights or legitimate interests within the meaning of the UDRP: see Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd,WIPO Case No. D2003-0654.
The Panel further finds that the Respondents have not been commonly known by the Domain Name and that there is no other basis on which the Respondents can claim to have rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Domain Name is being used intentionally to attract Internet users to the Respondents' competing website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of their website and the products sold through it.
In accordance with paragraph 4(b)(iv) of the UDRP, these circumstances constitute evidence that the Domain Name was registered and is being used in bad faith. There is nothing in the file which displaces this presumption. The Panel concludes that the third requirement of the UDRP is satisfied. 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 Name, , be transferred to the First Complainant, Tiffany (NJ) LLC.
Jonathan Turner
Sole Panelist
Dated: March 27, 2009
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