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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Texas Instruments Incorporated v. DM
Case No. D2000-1448
1. The Parties
The Complainant is Texas Instruments Incorporated of 12500 TI Boulevard, Dallas, TX 75243-4136, USA ("Texas Instruments").
The Respondent is DM whose address is given at Top, Banana, Piggabeen, NSW 2486, Australia ("DM").
2. The Domain Name and Registrar
The domain names at issue are "texas-instruments.com", "texas-instruments.net", "texas-instruments.org", and "texasinstruments.net". The Registrar is Tucows.com Inc of 96 Mowat Avenue, Toronto, Ontario M6K 3MI, Canada.
3. Procedural History
The complaint was filed in electronic format on October 24, 2000, with a hard copy following on October 27, 2000. The relevant notification procedures were complied with. Between November 1 and November 17, 2000, there were various communications from the Respondent to the Mediation Center followed by a full response submitted by email on 19 November.
The Complainant filed a rebuttal to the Respondent’s response on November 20, 2000, and there have been various further communications from the Respondent to the Mediation Center.
The Panel will consider the appropriateness of taking note of the Respondent’s various communications below.
All payments appear to have been duly made by Texas Instruments.
The Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The language of the proceeding is English.
4. Factual Background
Texas Instruments is an internationally well-known company in the business of manufacturing and selling electronic equipment, for example, electronic calculators, semi-conductors, and communication technologies. Texas Instruments is the owner of a wide variety of trade marks under the name "Texas Instruments", evidence which was submitted with the complaint.
Texas Instruments uses the domain name "ti.com" in connection with its Internet websites, but the full Texas Instruments name is used extensively at the website.
The domain names at issue were registered by DM on June 13,2000. There followed a passage of correspondence which included proposals by DM for the transfer of the domain names in question to Texas Instruments for sums ranging between US$100,000 and US$250,000.
The complaint was duly filed on October 24, 2000, as indicated above.
5. The Parties’ Contentions
Texas Instruments contends that the domain names in question are identical or confusingly similar to their trade marks and trading names; that DM has no right or legitimate interest in respect of the domain names; and that the domain names have been registered and are being used in bad faith.
Texas Instruments asserts that the identicality of the domain names is clear from the well-known trading style of their business, and its history of trading and portfolio of trade mark registrations. They assert that they have a substantial reputation in the name "Texas Instruments".
Texas Instruments contends that DM has no legitimate interest in the name. It does not point to any specific assertion or allegation to support that contention. However, Texas Instruments further asserts that the domain names were registered and are being used in bad faith. To support that contention, they point to the following:-
the domain names were registered in June 2000, long after the name "Texas Instruments" had become an established, almost household, name in international commerce;
● DM offered to sell the domain names to Texas Instruments for between $100,000 and $250,000 - sums well in excess of the out of pocket expenses incurred in registering the names;
● DM has confirmed that consumers intending to contact Texas Instruments have erroneously sent email messages to DM, demonstrating the actual consumer confusion, and an indication that DM’s objective was to capitalise on the goodwill of Texas Instruments;
● Texas Instruments points to a purported pattern of behaviour by DM in the registration of controversial domain names ranging from I-C-A-N-N.com to University-of-Oxford.com;
● Texas Instruments points to the fact that there have been at least two proceedings filed under the UDRP against DM by Oxford University;
● Texas Instruments claims that DM has used a false mailing address namely "Top Banana" in an attempt to avoid action by legitimate trade mark owners;
● Texas Instruments points to the fact that DM has created an email account using the Texas Instruments mark.
It is difficult to establish precisely what the response of DM is to these assertions. The response has to be collated from a series of wide-ranging communications, asserting that he has established his own intellectual property rights in the various names, which he has registered. He purports to call himself "Oxford University", and claims to have travelled the world under that name.
The basis of DM’s assertions appear to be that he has a business in the field of musical products, which he has chosen to call Texas Instruments. He therefore claims that he has a legitimate right and interest in the name, although he provides no evidence whatsoever of such legitimate use.
DM makes various assertions to the effect that he has been bullied, and that he has been persecuted by what he sees as big business establishments.
DM refers to the fact that the name "Texas Instruments" is a registered business name in Australia and he claims that he is entitled to use that for his musical instruments business. He says that he has no interest in products of the nature, which Texas Instruments are seeking to sell.
In relation to the allegation of bad faith concerning his address, he claims to live at the top of a road called "Banana Drive" and this justifies the address "Top Banana".
It is difficult to discern other meaningful arguments in the communications received from DM in the course of this complaint.
6. Discussion and Findings
Under paragraph 4 of the UDRP, the Complainant’s burden is to prove in relation to the complaint, that:-
(i) the domain name at issue is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
The Complainant must prove that each of these three elements are present in order to make out a successful case.
Before moving on to consider whether the Complainant has satisfied that burden, the Panel must first decide how to deal with the various communications from the Respondent. It would be an understatement to say that the Respondent’s approach to this matter has been unconventional, and to make a meaningful response at all, it is necessary for the Panelist to draw together the strands of a chain of correspondence. This is not helpful, and not in the spirit of the process, but, having read the communication, and in the light of the contents, the Panelist has decided to take all the communications into account in reaching his decision.
The question to be considered is whether the domain names at issue are identical or confusingly similar to trade marks or service marks in which the Complainant has rights. This is simple and straight forward. The domain names at issue all incorporate the name "Texas Instruments" in full. The presence of the well known Internet suffixes, and hyphenation, are not sufficient to get around the basic provision. Accordingly, the Complainant has satisfied this limb of the test.
Texas Instruments makes relatively little case in relation to its assertion that DM has no right or legitimate interest in the domain names. Its complaint constitutes principally an assertion to that effect, with the emphasis being on the question of bad faith.
However, as this Panelist has pointed out in a series of previous decisions, the nature of the second limb of the test is that the only requirement of the Complainant is to make a simple assertion. The way in which the UDRP guidelines have been drawn up suggests that the burden of proof then passes to the Respondent to satisfy the Panelist that it does have a right or legitimate interest. The UDRP guidelines set out the basis on which the Respondent might go about demonstrating its right and legitimate interest. These include evidence of demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; evidence that the individual has been commonly known by the domain name (even without trade mark or service mark rights having been acquired); or that a legitimate non-commercial or fair use of the domain name is being made without intent for commercial gain or misleadingly diverting customers in a way which might tarnish the trade mark or service mark at issue.
In the various rambling responses from the Respondent, none of these items are addressed. There is no evidence submitted of the commercial activities in the field of instrument sales, and as Texas Instruments has pointed out in its rebuttal, the mere registration of a business name does not connote valid use in a way which would be sufficient to rebut the Complainant’s assertion under this limb of the test.
Accordingly, the Panel finds that DM has no right or legitimate interest in the domain names in question.
The question of bad faith is usually the most difficult one to be addressed. However, in this case, that is not the case. The UDRP gives valuable and helpful guidance to Panelists as to how the Complainant might go about demonstrating bad faith. These include that the names were registered primarily for the purpose of selling or renting at an over-value; or that the name was registered in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name provided there is evidence of a pattern of such conduct; or that the name was registered primarily for the purpose of disrupting the business of the competitor; or that by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion.
In this case, Texas Instruments, has satisfied at least the first and second criteria for demonstrating bad faith. There was a specific proposal by the Respondent to sell the domain names in question to Texas Instruments for sums ranging from between $100,000 and $250,000. This was the Respondent’s first reaction to a complaint being made.
Further, there is a catalogue of previous conduct of this nature by the Respondent which would indicate that the domain names were registered in order to "get in first" with the names.
That is all that Texas Instruments is obliged to do. However, the Panelist cannot let this matter end without passing a couple of pertinent comments.
I would like to indicate that the approach adopted by the Respondent in this case was neither helpful nor conducive to the proper conduct of the complaint. The UDRP and its accompanying rules are straight forward and simple. If the parties stick to the approach set out in the rules, then matters can be conducted fairly and quickly. It is quite clear what the Complainant has to demonstrate, and consequently quite clear what the Respondent has to do in order to attempt to rebut the complaint. The thought of rambling correspondence, with assertions of fascist behaviour and corporate bullying made by the Respondent in this case were unhelpful and not in the least useful to the Panelist. The facetious approach which the Respondent adopted can not be easily equated with the legitimate conduct of a proper and reasonable business in the manner which would have been more convincing in the context of his arguments.
In the light of the foregoing, the Panel decides that each of the four domain names registered by DM is identical to the registered trade mark of Texas Instruments; that DM has no rights or legitimate interest in respect of these domain names, and that the domain names in issue were registered and used in bad faith.
Accordingly, the Panel requires that the registration of the domain names in issue be transferred to Texas Instruments.
Gordon D Harris
December 20, 2000