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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tiffany (NJ) LLC, Tiffany and Company v. La Tondra Moultrie, TiffanyJewelry925.com

Case No. D2009-0190

1. The Parties

The Complainants are Tiffany (NJ) LLC of Parsippany, New Jersey, United States of America and Tiffany and Company of New York, New York, United States of America (the "Complainants" or "Tiffany"), represented by Arnold & Porter LLP, United States of America.

The Respondent is La Tondra Moultrie, TiffanyJewelry925.com of Turku, Finland.

2. The Domain Name and Registrar

The disputed domain name <tiffanyjewelry925.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

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 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On February 19, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 February 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on March 13, 2009.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on March 17, 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 disputed domain name was registered on August 19, 2008. It directed towards a website where jewelry was offered for sale. Jewels such as earrings, bracelets and rings were offered for sale. Said products were allegedly from Tiffany. The website at the disputed domain name was inactive at the time the Panel rendered its decision.

According to the Complainants, Tiffany (NJ) LLC and Tiffany and Company have been the purveyors of high quality jewels, decorative objects, silver and china for over 170 years.

The Complainants contend that millions of United States dollars for advertising and promoting their products have been spent over the years. Furthermore, in the past decade, Tiffany`s sales have exceeded USD19.4 billion for products bearing or marketed under the TIFFANY trademark.

Complainant Tiffany (NJ) LLC is notably the holder of the following trademarks granted by the United States Patent and Trademark Office (USPTO):

- Trademark TIFFANY No. 133,063 registered on July 6, 1920;

- Trademark TIFFANY No. 1,228,409 registered on February 22, 1983;

- Trademark TIFFANY & CO. No. 23,573 registered on September 5, 1893;

- Trademark TIFFANY & CO. No. 1,228,189 registered on February 22, 1983;

- Trademark TIFFANY & CO. No. 1,251,356 registered on September 13, 1983;

- Trademark TIFFANY & CO. No. 137,723 registered on November 30, 1920.

The Respondent is La Tondra Moultrie, TiffanyJewelry925.com. It is localised in the city of Turku, Finland.

5. Parties` Contentions

A. The Complainants

First, the Complainants assert that the disputed domain name is identical or confusingly similar to the Complainants` trademark TIFFANY.

The Complainants also argue that the addition or insertion of the generic word "jewelry" and the number "925" does not prevent a finding of confusing similarity.

Second, the Complainants allege that the Respondent has no right or legitimate interest in the disputed domain name. The Complainants claim that inclusion of a well known trademark TIFFANY in the domain name is evidence that the Respondent has no rights or legitimate interests in said domain name. The Complainants further claim that the products presented on the website where the domain name directed were not manufactured by them. They also claim that the Respondent has never been authorised to sell products bearing the trademark TIFFANY, even if said products were genuine. Indeed, the Respondent is not an authorized TIFFANY agent.

Third, the Complainants contend that the disputed domain name was registered and is used in bad faith due to the reputation of the trademark TIFFANY. Among other things, the Complainants claim that the Respondent could not have ignored the trademark TIFFANY when registering the domain name. Furthermore, they assert that the Respondent has used the disputed domain name in bad faith to create a likelihood of confusion in order to attract Internet users for commercial gains.

B. The Respondent

The Respondent did not reply to the Complainants` contentions.

6. Discussion and Findings

The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.

Paragraph 4(a) of the Policy requires the Complainants to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent`s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

It is clearly beyond doubt that the Complainants have rights in the trademark TIFFANY for purposes of paragraph 4(a)(i) of the Policy.

The Complainant Tiffany (NJ) LLC`s trademark TIFFANY is incorporated in the disputed domain name in its entirety with the adjunction of the descriptive term "jewelry" and the number "925". The term "jewelry" is an obvious reference to one of the products for which the Complainants are well-known. The Complainants do not mention whether "925" is or is not a reference to a product or a product range.

The addition of the generic term "jewelry" and the number "925" is not sufficient to exclude confusing similarity with the TIFFANY trademark. (See Chocoladefabriken Lindt & Sprãngli AG v. Jules Mass & Yuan Yuan Chou, WIPO Case No. D2007-0446; Pepsico Inc. v. Johan De Broyer, WIPO Case No. D2007-1021; L`OREAL v. Lewis Cheng, WIPO Case No. D2008-0437; L`oreal v. Domain Park Limited, WIPO Case No. D2008-0072).

The adjunction of the term "jewelry" actually reinforces the association with the Complainants to the extent that the Complainants notably sell jewelry. It is likely that Internet users will make the link between the trademark TIFFANY and said product.

Furthermore, a domain name is confusingly similar to a trademark when it comprises said well-known mark in its entirety (See Tiffany (NJ) Inc., Tiffany and Company v. Tiffany Asia, WIPO Case No. D2008-1456).

As for the adjunction of gTLD ".com", it is now well established that the generic top-level domain, in this case ".com", should be excluded from consideration when determining whether the disputed domain name is identical or confusingly similar to the trademark held by the Complainants. It is indeed deemed to be a functional or generic component of the domain name (Gerling Beteiligungs-GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223).

Therefore, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparations to use, the disputed domain name or name(s) corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute, or

(ii) it (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights, or

(iii) it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainants are required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name, under paragraph 4(c) of the Policy.

The Respondent has not made any effort to use the disputed domain name for any purpose that might explain its choice in a manner consistent with having rights or legitimate interests (See Chocoladefabriken Lindt & Sprãngli AG, supra, and Chocoladefabriken Lindt & Sprãngli AG v. Domain Magic, LLC, WIPO Case No. D2007-0461).

Indeed, there is no evidence that the Respondent holds registered trademarks in any countries consisting of/comprising the element TIFFANY. There is also no evidence that the Respondent has ever filed applications for the registrations of such trademarks. Furthermore, due to the fact that the trademark TIFFANY is well known worldwide (See Tiffany (NJ) Inc., Tiffany and Company, supra), the Respondent must have known said mark at the time of the registration.

The Panel also takes note of the presence of the following information on the website where the disputed domain name directed:

"В© TIFFANY JEWELRY Corporation Ltd. All Rights Reserved"; "[A]ll of our merchandises are 100% guaranteed authentic and brand new".

According to all these elements, it is quite obvious that the Respondent never intended to conduct a legitimate activity via the disputed domain name. Indeed, the Respondent used the domain name to sell products bearing the trademark TIFFANY. According to the Complainants, some of these products were even not manufactured by the Complainants. Regarding the products that were manufactured by the Complainants, the Complainants have not licensed or otherwise authorized the Respondent to use the TIFFANY trademark, and there is no relationship between the Complainants and the Respondent.

As a consequence, it is obvious that the activity conducted by the Respondent via the website at the disputed domain name was not legitimate since counterfeiting products were sold.

The Respondent did its best to lead Internet users to believe that it was either the Complainants themselves, or that it was authorized, in one way or another, to sell TIFFANY products.

As previously observed, the Respondent has not made any attempt to rebut the prima facie case made by the Complainants. Therefore, the Panel will decide this dispute on the basis of the Complainants` undisputed contentions of facts. Although the Respondent`s default does not automatically result in a decision in favour of the Complainants, the Panel may draw negative inferences from the same (See Unilever N.V. v. Kentech, Inc., WIPO Case No. D2005-1021).

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name, and the requirements of paragraph 4(a)(ii) are also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants who are the owner of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of the Respondent`s documented out-of-pocket costs directly related to the domain name; or

(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) 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 Complainants` mark as to the source, sponsorship, affiliation, or endorsement of the Respondent`s website or location or of a product or service on the website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

a. Registered in bad faith

The disputed domain name is composed of the Complainants` trademark TIFFANY with the adjunction of the generic term "jewelry" and the number "925". Said generic term evokes precisely some goods offered by the Complainants and is therefore associated with the mark.

Besides, the Complainants` trademark is well-known. Accordingly, the Panel believes that the Respondent knew of the existence of the Complainants at the time of the registration of the disputed domain name. (See Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556).

It is indeed most likely that the fame of the trademark TIFFANY was the reason that decided the Respondent to register the disputed domain name. Had said mark been unknown, it would have been far less appealing.

Last, but not least, the Panel notices that the Complainants declared in their Complaint that the Respondent has no legitimate relationship with the Complainants, via, notably, an authorized reseller agreement.

These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by the Respondent.

In order to meet the requirement of paragraph 4(b) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the domain name is being used in bad faith.

b. Used in bad faith

The disputed domain name was inactive at the time the Panel rendered its decision. This being said, it was active when the Complainants filed their Complaint.

The Respondent was using the disputed domain name in an apparent effort to try to attract Internet users to its website where products allegedly from Tiffany were for sale. The presence of mentions such as "В© TIFFANY JEWELRY Corporation Ltd. All Rights Reserved" and "[A]ll of our merchandises are 100% guaranteed authentic and brand new" were due to lead Internet users into believing that the Respondent was the Complainants or that it was linked to them, via sponsorship or endorsement for instance.

Including the trademark TIFFANY in the disputed domain name was the best way to lure Internet users to its website. Even if some, but not all, Internet users could realize once on the website that the latter was not an official website of the Complainants, this does not decrease the harm made to the trademark and the likelihood of confusion.

Since, as indicated above, counterfeiting products were sold on the website at the disputed domain name, this is certainly not in favour of good faith use of the domain name.

As a conclusion, the use of the disputed domain name is an undisguised attempt to trade off the fame of the trademark TIFFANY by creating a likelihood of confusion in the mind of Internet users. This certainly falls within the previously cited category of bad faith use set out in paragraph 4(b)(iv) of the Policy (See Tiffany (NJ) Inc., Tiffany and Company v. Herbert Diaz, WIPO Case No. D2008-1635).

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 <tiffanyjewelry925.com> be transferred to the Complainants.


Nathalie Dreyfus
Sole Panelist

Dated: March 30, 2009

 

Источник информации: https://internet-law.ru/intlaw/udrp/2009/d2009-0190.html

 

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