In two recent domain dispute decisions Tiffany (NJ) LLC and Tiffany and Company v. Tiffany Store Net (WIPO D2009-0427, June 9, 2009) and Tiffany (NJ) LLC, and Tiffany and Company v. Vincent & Co. (WIPO D2009-0428, June 9, 2009) a single member Panel addressed the domains www.tiffanystore.net and www.tiffanylife.com respectively. Although the decisions were separate, the same Panelist handled the opinions. Tiffany and Company is the famous international jewelry store which maintains a web site at www.tiffany.com.
Under the ICANN UDRP policy a Complainant must prove (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the respondent’s domain name has been registered and is being used in bad faith.
In the first decision, www.tiffanystore.net the Panel reviewed the first of the three elements noting that the domain encompassed all of the mark TIFFANY. The crux of the decision though rested in the second element, wherein the Panel noted that Respondent’s web site claimed to sell identical goods manufactured by or for the Complainant, but that Respondent was not an authorized reseller and would not provide a certificate of authenticity. The Panel explained:
Respondent’s website disclaimer as to the lack of any relationship to or authorization from Complainant for sale of jewelry similar to or even identical to Complainant’s jewelry does not make Respondent’s offering of goods and services bona fide under paragraph 4(c)(i) of the Policy. In this regard, it is immaterial whether the goods may be “counterfeit”, as Complainant contends (without submitting evidence on the point), or “authentic” or “from the same factory”, as Respondent’s website asserts. In either event, as evidenced by Complainant’s submission of pages from Respondent’s website, Respondent’s use of Complainant’s famous trademarks in the Domain Name and throughout the Domain Name website is a clear attempt to confuse consumers and divert them to Respondent’s competing website.
Moving to the last prong, bad faith, the Panel relied on Policy paragraph 4(b)(iv) to note that Respondent had to know of Complainant’s well known trademark when it registered and used the domain. Additionally, the Panel found that Respondent’s use of Complainant’s TIFFANY marks on the domain to describe the jewelry was evidence of likelihood of confusion. Ultimately, the Panel ruled to TRANSFER the domain.
In the second dispute, www.tiffanylife.com the Panel made a similar quick analysis regarding the first element, and finding that the domain contained all of the Complainant’s mark with the addition of the descriptive word “life.” In this decision the Panel simply relied on Complainant’s prima facie showing of no rights in regards to the second element. The Panel noted that, according to Complainant, Respondent used the TIFFANY marks throughout the web site to confuse consumers.
Moving to the bad faith element, the Panel again relied on paragraph section 4(b)(iv) in finding that Respondent must have known about Complainant’s TIFFANY marks prior to the registration and use. Respondent’s use of the domain was found to attract users to this competing site for commercial gain by creating a likelihood of confusion. Ultimately, the Panel agreed to TRANSFER this domain as well.
