Texas Instruments Incorporated v. Digi Real Estate Foundation
Claim Number: FA0607000757516
Complainant is Texas Instruments Incorporated (“Complainant”), represented by Jennifer Myron, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Digi Real Estate Foundation (“Respondent”), P.O. Box 7-5324, Panama City N7 8DJ, PA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <texasinsruments.com>, registered with Enom.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 25, 2006.
On July 25, 2006, Enom confirmed by e-mail to the National Arbitration Forum that the <texasinsruments.com> domain name is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 21, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@texasinsruments.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <texasinsruments.com> domain name is confusingly similar to Complainant’s TEXAS INSTRUMENTS mark.
2. Respondent does not have any rights or legitimate interests in the <texasinsruments.com> domain name.
3. Respondent registered and used the <texasinsruments.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Texas Instruments Incorporated, uses the TEXAS
INSTRUMENTS mark in conjunction with its technological goods and services. Complainant first used its mark in 1972 and
since that time has established itself as a leading digital signal processing
and analog technology company.
Complainant holds a trademark registration with the United States Patent
and Trademark Office (“USPTO”) for the TEXAS INSTRUMENTS mark (Reg. No.
1,221,490 issued December 28, 1982).
Respondent registered the <texasinsruments.com> domain name on November 9, 2005. Respondent’s disputed domain name resolves to a website that displays links for third-party websites, some of which are in direct competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s federal trademark registration with the USPTO sufficiently establishes Complainant’s rights in the TEXAS INSTRUMENTS mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The Panel finds that Respondent’s <texasinsruments.com> domain name is confusingly similar to Complainant’s TEXAS INSTRUMENTS mark pursuant to Policy ¶ 4(a)(i). The disputed domain name contains a misspelled version of Complainant’s mark, a mistake that an Internet user is easily capable of making when attempting to locate Complainant’s website. Such a typosquatted domain name is confusingly similar under Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s TEXAS INSTRUMENTS mark and that Respondent is not associated with
Complainant in any way. Furthermore,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the <texasinsruments.com> domain name. In Ian Schrager
Hotels, L.L.C. v. Taylor, FA 173369 (Nat.
Arb. Forum Sept. 25, 2003), the panel found that without demonstrable evidence
to support the assertion that a respondent was commonly known by a domain name,
the assertion must be rejected. See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the
mark). Accordingly, the Panel finds
that Respondent is not commonly known by the disputed domain name under Policy
¶ 4(c)(ii).
The evidence on record indicates that Respondent is using
the <texasinsruments.com> domain name to operate a website that
provides links to third-party websites, some of which provide goods and services
in direct competition with Complainant’s business. In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002), the panel found that the respondent’s diversionary
use of the complainant’s marks to send Internet users to a website which
displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services. See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396
(Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which
is blank but for links to other websites, is not a legitimate use of the domain
names). Thus, based on Respondent’s use
of a misspelled version of Complainant’s trademark to host a website that
displays third-party website links, the Panel finds that Respondent lacks a bona
fide offering of goods and services under Policy ¶ 4(c)(i) and a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent is using the <texasinsruments.com>
domain name to redirect Internet users to Respondent’s commercial website that
features links to competing third-party websites. The Panel finds that such use of the disputed domain name
constitutes disruption and is evidence of bad faith registration and use under
Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Respondent is using the disputed
domain name to divert Internet users to a website that displays links to
third-party websites, some of which are in direct competition with
Complainant. Based on the uncontested
evidence presented by Complainant, the Panel infers that Respondent receives
click-through fees for diverting Internet users to these third-party
websites. Such use of the disputed
domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain); see
also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Moreover, the Panel finds that the registering of the <texasinsruments.com> domain name, which is a typosquatted version of Complainant’s TEXAS INSTRUMENTS mark, evidences bad faith registration and use. In Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), the panel found that typosquatting was the intentional misspelling of words with the intent to intercept and siphon off traffic from its intended destination, by preying on Internet users who make common typing errors, and that typosquatting was inherently parasitic and of itself evidence of bad faith. See Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”). The Panel finds that the disputed domain name, combined with the content displayed on the corresponding website, is evidence of Respondent’s intent to profit from the good-will attached to Complainant’s mark through the registering of the <texasinsruments.com> domain name.
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <texasinsruments.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 7, 2006
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