Tiffany and Company; Tiffany (NJ) Inc. v. Janet White

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tiffany and Company, Tiffany (NJ) Inc. v. Janet White

Case No. D2003-0456

1. The Parties

The Complainants are Tiffany and Company of New York, United States of America; and Tiffany (NJ) Inc. of Parsippany, New Jersey, United States of America, represented by Dorsey & Whitney, LLP, United States of America (hereinafter referred to jointly and severally as "Complainant").

The Respondent is Janet White of Tampa, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tiffanysgiftstore.com> is registered with Network Solutions, Inc. (hereinafter referred to as "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") electronically on June 13, 2003, and received by the Center in hardcopy on June 16, 2003. On June 16, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On June 19, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 June 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2003.

The Center appointed M. Scott Donahey as the Sole Panelist in this matter on July 30, 2003. 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 is the owner and assignee of a number of registrations with the United States Patent and Trademark Office ("USPTO") for the marks TIFFANY and TIFFANY & CO. Complaint, Annex D. The earliest registration was issued on September 5, 1893, and most date back to 1920 or before. Id. Complainant has registered <tiffany.com>, which resolves to a website offering information regarding Complainant’s goods and services and on which goods promoted and/or manufactured by Complainant are offered for sale.

Complainant is known throughout the United States and worldwide as a purveyor of quality jewelry and assorted luxury items. In 2002 Complainant’s sales totaled $1.7 billion.

Respondent registered the domain name <tiffanysgiftstore.com> on May 15, 2001. Complaint, Annex A. The domain name at issue resolves to a website offering for sale a variety of goods, including some types of goods in competition with goods sold under the Complainant’s registered trademarks. Complaint, Annex G.

Respondent has failed to respond to the Complaint.

5. Parties’ Contentions

A. Complainant

Complaint contends that the domain name at issue is confusingly similar to trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2) that the Respondent has no rights or legitimate interests in respect of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant

has proved

its rights

in the trademarks

TIFFANY

and TIFFANY & CO.

Since the

domain name

at issue

incorporates

the well-known

trademark

of Complainant,

it is confusingly

similar

to Complainant’s

mark. Wal-Mart

Stores v.

MacLeod,

d/b/a For

Sale,

WIPO

Case No.

D2000-0662,

at 5.

B. Rights or Legitimate Interests

Complainant

has in a

credible

way alleged

and Respondent

has failed

to show

that Respondent

has any

rights or

legitimate

interests

in respect

of the domain

name at

issue. This

entitles

the Panel

to infer

that Respondent

has no rights

or legitimate

interests

in respect

of the domain

name at

issue. Alcoholics

Anonymous

World Services,

Inc. v.

Raymond,

WIPO Case

No. D2000-0007;

Ronson

Plc v. Unimetal

Sanayi ve

Tic. A.S.,

WIPO Case

No. D2000-0011.

C. Registered and Used in Bad Faith

Respondent

had to know

of Complainant’s

famous marks

at the time

that Respondent

registered

the domain

name at

issue. Veuve

Clicquot

Ponsardin,

Maison Fondée

en 1772

v. The Polygenix

Group Co.,

WIPO

Case No.

D2000-0163.

Respondent

is using

the domain

name to

resolve

to a website

that offers

for sale

an assortment

of products,

many of

which are

products

in connection

with which

Complainant

has registered

trademarks.

Nowhere

on the site

is there

a disclaimer

that the

site is

not connected

with Complainant’s

well-known

enterprise

or trademarks.

InfoSpace.com,

Inc. v.

Hari Prakash,

WIPO

Case No.

D2000-0076.

Despite

having been

given proper

notice of

the Complaint,

Respondent

failed to

appear and

contest

this proceeding.

Under the above listed circumstances, the Panel finds that Respondent has used the domain name at issue in an intentional attempt to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark. Policy, Paragraph 4(b)(iv). Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.

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 <tiffanysgiftstore.com> be transferred to the Complainant.

M. Scott Donahey

Sole Panelist

Dated: August 7, 2003

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