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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Christie’s Inc. v. Tiffany’s Jewelry Auction Inc.
Case No. D2001-0075
1. The Parties
The Complainant is: Christie’s Inc., a New York corporation with its principal place of business at 20 Rockefeller Plaza, New York, New York, 10020, U.S.A. The Complainant is represented by Perla M. Kuhn, Esq., Hughes, Hubbard & Reed LLP, One Battery Park Plaza, New York, New York 10004, U.S.A.
The Respondent is Tiffany’s Jewelry Auction, Inc., 6500 South Highway 17-92, Fern Park, Florida 32730, and U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is: "christiesauction.com".
The registrar is Network Solutions, Inc. (NSI) of 505 Huntmar Park Drive, Herndon, Virginia 20170-5139, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s (the Center) Supplemental Rules for Uniform Domain Name Dispute Resolution (the Supplemental Rules).
The Complaint was filed on January 18, 2001. On January 23, 2001, the Center requested that the Registrar NSI check and report back on the registrant for the domain name "christiesauction.com". On January 24, 2001, NSI reported to the Center that the registrant was the Respondent: Tiffany’s Jewelry Auction, Inc.
On January 26, 2001, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail, and the proceedings began officially. The Respondent’s Response was received by the Center on February 13, 2001.
The Administrative Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence on February 19, 2001, and the Center proceeded to appoint the Panel on February 20, 2001.
On February 28, 2001, the Complainant filed an additional submission with the Center and the Respondent asked the Center for leave to respond. However, the Panel notified the Center that, per Rule 12, it did not intend to solicit and would not read additional filings by either party.
The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by March 6, 2001.
4. Factual Background
The Complainant, Christie's Inc., is an auction house with offices all over the world, including in New York, Stockholm, Los Angeles, London, Amsterdam, Paris, Zurich etc. The merchandise for which the Complainant holds auctions includes: decorative arts, jewelry, wine, stamps and motor cars.
The Respondent, Tiffany's Jewelry Auction, Inc., is also in the business of auctions, but it conducts this business online using the disputed domain name "christiesauction.com". It offers catalogues of jewelry that it invites its web visitors to bid on using the services of its links to eBay.
The Respondent registered the disputed domain name on December 14, 1998 and since that time has been using the name for its jewelry auction business. On several occasions, including on August 28, 2000, and November 16, 2000, the Complainant wrote to, or telephoned, the Respondent to allege trademark infringement. The parties were unable to settle their dispute amicably, and the Complainant now seeks possession of the domain name in this proceeding (Complaint Exhibit G).
5. The Parties’ Contentions
A. Complainant's Contentions:
- The "Christie's" trademark is famous worldwide for auctioneering.
- The Complainant has numerous trademark registrations for its mark, which it has been using since the 18th century.
- The disputed domain name is confusingly similar to the Complainant's mark because the Respondent is using it to conduct auctions, ie, the same business as the Complainant.
- The Respondent is not a licensee of the Complainant and holds no trademark registration for the name Christie's.
- The use of a domain name incorporating another party's trademark to direct users to one's own website is not a legitimate use.
- Bad Faith: The Respondent has used the domain name registration to intentionally attract, for commercial gain, Internet users to its website.
- Given the fame of the Christie's mark, the Respondent's use of the Complainant's mark can not be coincidental.
- Respondent's registration of the domain name "tiffanysauction.com" infringes another famous trademark and is further evidence of the Respondent's bad faith.
- The disputed domain name should be transferred to the Complainant.
B. Respondent's Contentions
- The disputed domain name, "christiesauction.com", is not identical or confusingly similar to the Complainant's name Christie's .
- The disputed domain name "christiesauction.com" is not a trademark.
- The Complainant cannot be confused with the Respondent because most of the Respondent's jewelry sells for less than U.S.$1,000, whereas the Complainant deals in expensive items.
- The Respondent has a legitimate interest in the disputed domain name as it merely uses it as a link to eBay and has been doing so continuously for over two years.
- The Respondent has no intention of selling the disputed domain name.
- The Respondent prefers not to be associated with the Complainant in view of the Complainant's having been accused of bidding fraud.
- The Respondent is entitled to keep the disputed domain name.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name "christiesauction.com" transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant has provided copies of its Christie's trademark registrations from the online service of the United States Patent and Trademark Office's U.S. Trademark Electronic Search System (Tess). These include "Christie's", no. 1,915,359 registered August 29, 1995 for auctioning of fine and decorative art, antiques, jewelry and other valuable objects; and "Christie's Appraisals" for appraisals of art and jewelry, no. 1,908,802 registered on August 1, 1995 (Complaint Exhibit D).
The disputed domain name, "christiesauction.com", is certainly confusingly similar to the Complainant's mark since it merely adds the word "auction" used in its generic sense. The confusion is accentuated when we consider that auctions are the Complainant's primary business.
The Panel finds the disputed domain name is confusingly similar to a trademark in which the Complainant has demonstrated rights.
Legitimate Rights or Interests
The Respondent uses the disputed domain name for a website that markets catalogues of moderately expensive jewelry. The website invites those who view the jewelry to bid on it by clicking on the link to e-Bay. In the Panel's view this is not a legitimate use of the Complainant's trademark; it is instead an infringing use (Chanel, Inc. v. Estco. Technology Group, WIPO Case No. D2000-0413, September 18, 2000). The Respondent is merely using the Complainant's famous trademark to attract visitors to its more modest operation.
Registered and Used in Bad Faith
The Panel views the Respondent as having been in bad faith in registering and using the disputed domain name, "christiesauction.com", on several counts.
First, although not specifically mentioned in the non-exhaustive Policy bad faith provisions, the very fact of registering such a famous mark to use in the same business as the Complainant reeks of bad faith (Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, May 1, 2000).
Second, the Respondent in bad faith is using the Complainant's famous mark to attract web traffic for commercial gain in violation of the Policy at 4b(iv). The Panel is convinced that the Respondent did not happen by chance on the Christie's name for use in auctioning jewelry. The Panel finds it is not very important that the Respondent's jewelry sells mostly for under U.S.$1,000: the Respondent still is marketing essentially the same goods and services as the Complainant.
Based on ICANN Policy paragraph 4(i) and Rule 15, the Panel orders that the disputed domain name, "christiesauction.com" be transferred form the Respondent, Tiffany's Jewelry Auction, Inc., to the Complainant, Christie's Inc. The domain name is confusingly similar to the Complainant's famous trademark. In addition, the Respondent has no legitimate rights or interests in the name, and registered and was using it in bad faith.
Dennis A. Foster
Date: March 6, 2001