WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tiffany (NJ) LLC and Tiffany and Company v. Silver Yen Case No. D2009-0193 1. The Parties
The First Complainant is Tiffany (NJ) LLC, Parsippany, New Jersey, United States of America and the Second Complainant is Tiffany and Company, New York, United States of America, both represented by Arnold & Porter, United States of America.
The Respondent is Silver Yen, Los Angeles, California, United States of America. 2. The Domain name and Registrar
The disputed domain name is registered with Beijing Innovative Linkage Technology Ltd. dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2009. On February 13, 2009, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba a request for registrar verification in connection with the disputed domain name. On February 16, 2009, Beijing Innovative Linkage Technology Ltd. dba transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 26, 2009.
The Center appointed Linda Chang as the sole panelist in this matter on April 15, 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
The First Complainant is the proprietor and the second Complainant is the exclusive licensee and user (hereinafter jointly referred to as “the Complainants”) of the TIFFANY trademark. The Complainants have used the TIFFANY trademark and trade name on high quality goods, including jewellery, silver and other decorative objects for over 170 years.
The United States Patent and Trademark Office has granted the First Complainant various trademark registrations comprising of or containing the TIFFANY name in respect of, inter alia, “jewellery” in International Class 14. In addition, the Complainants have registered these trademarks in many countries around the world.
The Respondent registered the domain name on February 4, 2007. At the time of the Complaint, the Respondent appears to have been operating a website in connection with the disputed domain name that offered for sale, jewellery products bearing the TIFFANY name. This fact is evidenced by printouts from the website , dated February 10, 2009, and attached to the Complaint. 5. Parties' Contentions A. Complainant Identical or confusingly similar
The Complainants state that they are the registered owner or exclusive licensee of the trademark TIFFANY in the USA as follows:
Mark International Class Registration No. Registration Date
TIFFANY
14
133,063
July 6, 1920
TIFFANY
14
1,228,409
February 22, 1983
TIFFANY & CO.
14
23,573
September 5, 1893
TIFFANY & CO.
8, 14
1,228,189
February 22, 1983
TIFFANY & CO.
42
1,251,356
September 13, 1983
TIFFANY & CO. (stylized)
30
137,723
November 30, 1920
In addition, the Complainants state that they also own these marks, and variations thereof, in jurisdictions throughout the world.
The Complainants contend that the domain name incorporates their trademark in its entirety and that the adaptation of a recognized trademark in a domain name by mere addition of generic words such as does not prevent a finding of confusing similarity. The Complainants therefore believe that the domain name is confusingly similar to the trademark. Rights or Legitimate Interests
The Complainants contend that the Respondent does not have rights or legitimate interests in the domain name. They contend they have never authorized the Respondent to register or use the domain name. The Complainants further contend that once they have made out a prima facie case that the Respondent lacks rights or legitimate interests, it would be the Respondent's responsibility to prove otherwise. Registered and Used in Bad Faith
The Complainants contend that given the reputation of the trademark TIFFANY it is inconceivable that Respondent was unaware of their trademark rights in the TIFFANY marks, especially where the Respondent's website purports to sell “Tiffany” jewelry.
The Complainants contend that the Respondent's selection of the domain name, which wholly incorporates the Complainants' trademark, cannot be a coincidence but instead the widespread fame and goodwill of the Complainants' marks likely served as the primary appeal for Respondent's registration of a domain name incorporating the word “tiffany.”
The Complainants further contend the Respondent has used the domain name in bad faith in connection with products sold under the “Tiffany” name without the Complainants' authorization or consent. By doing so, the Respondent has attempted to attract, for commercial gain, Internet users to the “www.T” website by creating a likelihood of confusion with the Complainants' marks. The Complainants contend that the Respondent's above conducts fall within paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Language of the Proceedings
In accordance with paragraph 11(a) of the Rules, the default language of the proceedings is Chinese, as the Registration Agreement was in Chinese. Paragraph 11(a) however reserves to the Panel the authority to determine the language of the proceedings having regard to the circumstances of each case. In reaching its decision, the Panel must adhere to the principle of fairness to the parties and the need to maintain an inexpensive and expeditious domain name dispute resolution procedure.
The Complainants filed submissions on February 27, 2009 (“the Submissions”) requesting English to be the language of the proceedings based on the following reasons:
(i) The Respondent purports to reside in the United States of America;
(ii) The Respondent has used an English term in the disputed domain name;
(iii) The Respondent conducts its website entirely in the English language; and
(iv) The Complainants, being United States entities, are not in a position to conduct the proceedings in Chinese without a great deal of additional expense and delay.
Having considered the circumstances above, the Panel is of the view that English is the appropriate language for the proceedings. The Panel can easily infer from the evidence that the Respondent is both competent in the English language and capable of partaking in English language proceedings. Further, it is not foreseeable that the Respondent will be prejudiced by having the proceedings conducted in English. Therefore, the Panel determines under paragraph 11(a) that English shall be the language of the proceedings. 7. Discussions and Findings
For the Complainants to succeed they must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that the Complainants have established that the disputed domain name is confusingly similar to the Complainants earlier registered trademark TIFFANY. The reasons are as follows:
First, the Complainants have rights in the registered trademark TIFFANY. These rights date as far back as the 1920's and, the Panel notes even though not decisive under this first element, well precede the registration of the disputed domain name.
Secondly, the disputed domain name is similar to the TIFFANY trademark as it wholly encompasses the trademark, save for the additional letters “la”. The additional letters do not however, alter the fact that the dominant feature of the domain name is “Tiffany”, which immediately calls to mind the Complainants' TIFFANY trademark. In addition,
the letters “la” could serve as a geographical indicator. The letters “la” is the common acronym for the city of Los Angeles in the United States. The addition of ‘la', instead of being capable of differentiating the domain name from the trademark, is more likely for Internet users to think the website under the domain name is the official site of the Complainant's in Los Angeles where in fact it is not.
Finally, the addition of a generic top-level domain name, such as “.com” or “.net” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark.
In the circumstances, the Panel finds that the domain name is confusingly similar to the Complainants registered trademark TIFFANY. B. Rights or Legitimate Interests
The Panel concludes that the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name after taking into consideration the Complaint and the attached evidence. The reasons are as follows:
First, the Respondent does not appear to have any other reasons for including the TIFFANY trademark in the disputed domain name than to take advantage of the fame of the trademark. The Respondent has used the disputed domain name to advertise and sell jewellery that it claims is genuine “Tiffany” jewellery. This fact is evidenced by the webpages from the Respondent's website submitted at Annex E of the Complaint. The Complainants have however confirmed that they have never sold to or authorised the Complainants to sell genuine “Tiffany” jewellery through the Respondent. It can therefore be inferred that the main intention for adopting the domain name is to misdirect Internet traffic to the Respondent's own website in order to entice Internet users to purchase unauthorised “Tiffany” branded goods. Such use demonstrates a lack of legitimate interest in the disputed domain name.
Secondly, the Complainants further confirm that the Respondent has not been authorised to use the TIFFANY trademark as a domain name.
Finally, there is no evidence that the Respondent has ever been known by the disputed domain name or that it otherwise has any right in the domain name. Further, the Respondent has not made any attempt to rebut this prima facie case.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Fait
The Panel concludes that the Complainants have established on the balance of probabilities that the disputed domain name was registered and used in bad faith. In particular, the Respondent's conduct falls squarely within paragraph 4(b)(iv) of the Policy which states:
“by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the site or location.”
The reasons are as follows:
First, the Respondent does not appear to have any legitimate interests in registering the disputed domain name. Instead, the Respondent clearly had knowledge of the Complainants' rights in the TIFFANY trademark given the use of the website to sell “Tiffany” branded jewellery. It is also inconceivable that the Respondent would be unaware of the fame of the Complainants' trademark TIFFANY. It is therefore highly probable that the Respondent registered the disputed domain name to take advantage of the widespread fame and reputation of the TIFFANY trademark. It is also highly probable that the intention behind registering the domain name was to create confusion with the Complainants' TIFFANY trademark as well as deceive Internet users into thinking that the goods sold on the Respondent's website originate from the Complainants.
Secondly, the Respondent has no legitimate relationship with the Complainants yet the Respondent is using the disputed domain name in connection with “Tiffany” branded products without the consent or authorisation of the Complainants. The Complainants have submitted printouts of their official website “” as well as printouts from the website “www.”. The “Tiffany” name appears on all the printouts of Respondents website. The printouts also clearly indicate that the Respondent is offering for sale products which are identical in design to the goods of the Complainants, some of which are branded “Tiffany”. It is therefore obvious that the sole intention of the Respondent in using the domain name is to entice, for commercial gain, Internet users to the “www.” website by creating a likelihood of confusion with the TIFFANY trademark.
Finally, the Respondent would be aware that use of the disputed domain name would inevitably be detrimental to the Complainants. There is no doubt that customer confusion or deception would be caused and this could result in the diversion of custom from the Complainants.
In the circumstances, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. 8. 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 Complainants.
Linda Chang
Sole Panelist
Dated: May 8, 2009
Full & Egal Universal Law Academy