Claim Number: FA0701000903885
PARTIES
Complainant is Texas Instruments Incorporated (“Complainant”), having an address at 12500 TI Boulevard, Dallas,
Texas, United States of America represented by Jennifer Myron Donahue, of Arent Fox LLP, 1050 Connecticut Avenue
NW, Washington, DC 20036, United States of America. Respondent is Tom Baert (“Respondent”), having an address at Berenbroekstraat 28,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texasinstruments.mobi>, registered
with Go
Australia Domains Inc.
PANEL
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.
James Bridgeman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On January 31, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 20, 2007 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@texasinstruments.mobi
by e-mail.
An electronic copy only of the Response was received on
On
The Panel has admitted and considered the Response as
it does not prejudice the interests of the Complainant.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is one of the leading digital signal processing and analog
technology companies in the world.
Complainant owns intellectual property rights in its TEXAS INSTRUMENTS trademark
and service mark, including several U.S. Trademark Registrations. The mark has been used in connection with its
proprietary technologies and related services for many decades. Complainant claims that due to its long term
and widespread use of the TEXAS INSTRUMENTS trademark, the mark has become
famous and is immediately recognized by consumers as a source of Complainant’s
products, services and goodwill.
Complainant has provided evidence of its ownership of the following US registered trademarks and pending application:
TEXAS INSTRUMENTS, U.S. Registration No. 1,221,490, for electronic calculators in Class 9, at least as early as September 30, 1972, with a Registration Date of December 28, 1982.
TEXAS INSTRUMENTS, U.S. Registration No. 2,603,875, for integrated electrical circuits, namely, optoelectronic circuits, digital signal processing circuits, analog circuits and mixed signal circuits; calculators, namely, graphing calculators, scientific calculators, business calculators, printing calculators and general purpose calculators; thermostats; circuit breakers for thermal protection of electric motors and compressors; electrical test equipment and test sockets for testing electronic circuits; digital imaging systems, namely electronic devices for digitizing and projecting visual images in motion; image sensors, namely ccd area image sensors; speech synthesis and speech recognition processors; miniature rf transceivers used for identification and tracking of objects in motion; computer software for use in multimedia communications and for use in programming digital signal processors, and calculator software; gaseous and liquid flow sensors, gas sensors, inertial sensors, and heat sensors, in Class 9, at least as early as 1950, with a Registration Date of August 6, 2002.
TEXAS INSTRUMENTS, U.S. Registration No. 2,623,796, for providing product information on semiconductor circuits by global computer network, in Class 35, at least as early as November 7, 2000, with a Registration Date of September 24, 2002.
TI TEXAS INSTRUMENTS, U.S. Application Serial No. 78/682238, for semiconductor circuit devices; computer software for operating, programming, designing, and fabrication of such devices in Class 9; and Printed matter, namely, sales literature, data sheets, and user's manuals in the field of semiconductor devices, in Class 16.
Complainant has also provided evidence of its ownership of the following CTM registrations:
TEXAS
INSTRUMENT, CTM registration number 000291534, registered on
TI
TI TEXAS INSRUMENTS, Device, CTM registration number 002389856, registered on December 19, 2002 in respect of goods and services in international classes 9 and 42.
TI-RFid A TEXAS INSTRUMENTS TECHNOLOGY, Device, CTM registration
number 002518009, registered on
OMAP TEXAS
INSTRUMENTS TECHNOLOGY, Device, CTM registration number 002515443, registered
on
On or about
Complaint submits that to date, Respondent has not used the domain name in connection with any bona fide offering of goods or services. Respondent, as an individual, business, or other organization, is not commonly known by the domain name, and is not making any legitimate noncommercial or fair use of the domain name. The domain name resolves to a parked webpage.
On or about December 5, 2006, Respondent notified Complainant via email about his registration and intended use of the domain name <texasinstruments.mobi> and in doing so acknowledged Complainant’s prior rights in the TEXAS INSTRUMENTS trademark, stating, “I have studied your website very carefully. . .prior to registering the domain name.”
Complainant replied to Respondent and requested that Respondent cease using its mark and surrender the domain name registration, but Respondent refused so to do.
Complainant
submits that Respondent’s failure to comply with the transfer request of
Complainant, coupled with the fact that Respondent knowingly registered the
domain name <texasinstruments.mobi>, which is
identical to Complainant’s famous TEXAS INSTRUMENTS trademark, is evidence of
bad faith. Given the fame of
Complainant’s trademark, there is no feasible scenario where use of the domain
name would not likely result in consumers being confused as to the source of
Respondent’s website. Respondent
attempts to distinguish the site, stating in correspondence that, “the language
of my website will be Dutch” and “the focus will be regional, i.e. the region
Flanders in
Moreover, Complainant submits that Respondent appears to have established a pattern of registering domain names consisting of trademarks owned by third parties to prevent the owner from reflecting the mark in a corresponding domain name. Respondent is the registered owner of dozens of other domain names that include trademarks owned by third parties, including: <fordgm.net>, <gmford.org>, <ericssonglobalservices.net>, <ericssonmultimedia.net>, <nokia-siemens-networks.info>, <renaultnissangm.net>, <gmrenaultnissan.net>, <cggveritas.org>, <cgg-veritas.org> and <gruppobancario.com>.
Complainant submits that Respondent has established a pattern of acquiring domain names primarily for the purpose of preventing the trademark owners, and in particular the Complainant in casu, from reflecting their marks in a corresponding domain name, in violation of the paragraph 4(b)(ii) of the Policy.
Such acts constitute bad faith registration and bad faith
use of the domain name at issue.
B. Respondent
Respondent accepts that
he registered the domain name <texasinstruments.mobi> on
Respondent claims to
have enjoyed a life-long interest in music. He claims that he chose the domain name <texasinstruments.mobi>
because his late grandfather gave this particular name to the musical duo that
he formed with his sister. He intends to
use the domain name as the address of a forum where amateurs and lovers of
classical instruments can share information, photos, stories, non-commercial private advertisements to buy/sell musical
instruments, pieces of music and musical scorings, songs, festivals, technical
information on musical instruments. The
target group to whom the website will be dedicated shall be exclusively amateur
music lovers and/or players and/or groups and/or organizations.
The objective is to run
the website for people living in
He plans to establish
other .mobi projects over the next one to four years and he has registered a
portfolio of .mobi names.
Addressing the issue of Complainants
rights in the TEXAS INSTRUMENTS mark, Respondent submits that the words “
Taking into account that
the meaning of the word “instruments” is
very diversified - all kind of tools, equipments, pieces, machinery, devices,
apparatus, musical instruments can be called ‘instruments’ – the combination of
the words has a very common descriptive character, and can not be regarded as
being distinctive.
There are at least 16,400
companies using the word “
There are 54 CTM
registrations incorporating the word “
Respondent cites the
decision of the learned panel in Betonsports Plc, Bet-On-Sports
(Costa Rica), S.A., & Domain Choices Ltd. v. Tpcr Development SRL, D2006-0634 (WIPO Aug.
11, 2006) and states that in that case the panel considered that “… the CTM
registration is based on the US trademark registration and expressly notes that
the mark has not acquired distinctiveness, so the CTM would have little probative
value on its own.”
Complainant is very well
aware of Respondent’s intentions to use the domain name regionally in
Respondent first became
aware of Complainant’s trademark or company name between 1997 and 2000 in the
pursuance of his profession. Respondent’s musical group was first known as
TEXAS INSTRUMENTS prior to that date in the years 1977 to 1979.
Complainant is the owner
of the Internet domain names <texasinstruments.com> and <texasinstruments.net>
but said domain names are not actively used. The domain name <texasinstruments.com>
has an automatic redirection to a website at the <ti.com> Internet address and the <texasinstruments.net>
domain name is directed to a blank page. The domain names <texasinstruments.org>
and <texasinstruments.info> are held by third parties.
In almost all European
countries the ccTLD’s for the words “texas instruments” are available for
registration or registered by a third party
Complainant did not
apply to register the domain name in dispute during the .mobi Sunrise Period
and it must be considered that Complainant was not interested in the domain
name in dispute on the date on which Respondent registered the domain name. Furthermore,
Complainant has not registered either the domain names <ti.mobi> or <texas-instrument.mobi>,
by which it can be considered that Complainant is still not interested in reflecting
its name or trade mark on the .mobi gTLD.
Given that the combination
of the words “Texas” and “instruments” lack distinctiveness with a diversified
descriptive meaning, and that the Complainant’s trademark in Europe was
qualified as having “no distinctiveness” and that the Complainant has failed to
give evidence of its fame or awareness in Belgium, it is not conceivable that Complainant’s
trademark can be considered as having “fame” or “special and particular
significance” or “valuable goodwill” in Belgium.
Furthermore Complainant
has not shown any interest to reflect its trade mark on the Belgian ccTLD.
Respondent claims to
have a legitimate interest in the domain name as he intends to use the registration
for the purposes of sharing and exchanging information via a mobile Internet
forum on the subject matter and Respondent submits that such use is a bona fide offering of services. In support of this assertion, Respondent cites
the decision of the learned panel in Estate of Jennings & Servis v. Submachine & Ross, D2001-1042 (WIPO Oct. 25, 2001)
where Respondent had been using the domain name in connection with a website to
share information on the author Gary Jennings and the panel held that it
amounted to use in connection with a bona
fide offering of goods or services such as to satisfy the provisions of the
Policy.
The fact that Respondent
intends to operate his website on a non-commercial or non-profit basis nonetheless
comes within the concept of “services” as contemplated by paragraph 4(a)(i) of the Policy. In
this regard Respondent cites the decision of the learned panel in 2001 White Castle Way, Inc. v. Jacobs, D2004-0001 (WIPO March 26, 2004) where the
panel stated that “the term “services” under Paragraph 4(c)(i)
is not limited to commercial services
…Limiting Paragraph 4(a)(i) to commercial or for-profit services would
import a limitation that is not expressly provided by the Policy, and the panel
does not find a basis for doing that.”
On
“1.
I have registered the domain name "texasinstruments.mobi" for
a mobile-internet project
2. my project will not be competitive and/or similar to yours
3. my future .mobi website will not misleadingly
divert consumers from your company
4.
my future .mobi website will not tarnish your
trademark or service mark
5.
the focus of my future .mobi website will be
regional
6.
taking into account that the .mobi technology is still in its early phase, the
intention is to start with the .mobi site within a 2 to 4 years timeframe
Please
don't hesitate to contact me if you might need additional information. …”
Complainant responded
with a request for transfer of the domain name on December 8, 2006 stating that
it could not conceive any use of the name without infringing its trademark.
Respondent then replied
that there was no risk of trademark infringement and that he was prepared to
take measures ensuring that Internet users could not be confused:
Complainant responded by
filing this Complaint.
As to whether Respondent
made demonstrable preparations to use the domain name, Respondent submits that
while the general registration of .mobi domain names began on
To progress his plans,
Respondent has engaged in negotiations with an IT consultant for the purposes
of utilising the domain name. He has
decided to postpone further negotiations until the technology for mobile communications
moves to a more developed level.
Respondent has registered
a portfolio of .mobi names for several dotMobi projects and he intends to draw
up a concrete development plan for each project – a much more time consuming
activity than originally planned. He
currently does not have the time to focus on the technical development of the
website and has opted to finalize the writing of the development/business plans
before moving to the next stage, or before placing any content on the site. The .mobi TLD Conformance Policy enforces
mandatory rules with which a .mobi website must comply with regard to the
Switch On! Guides. An official part of
this policy is that non-conforming domains will be suspended. Respondent does not possess the technical
skills to design a temporary compliant .mobi page on his own and is unable to
establish a complaint parking page.
Respondent submits that despite
his passive use he nonetheless has a legitimate interest or right in the domain
name in dispute. In support of this
submission Respondent cites the decision of the learned panel in Pfizer
Inc v. Robichaux, D2003-0399 (WIPO July 16,2003) where, in
refusing the complainant’s application, the panel in turn cited the decision of the panel Fielding v. Corbert, D2000-1000
(WIPO Sept. 27, 2000), as follows: “The panel Recognizes that there are
contexts in which the registrant of a domain name should not be expected to
make immediate use of that name, including for legitimate noncommercial or fair
use purposes. … In these circumstances,
the absence of “making” use in connection with a website by the Respondent does
not preclude a finding of rights or legitimate interests in the disputed name
based on fair use. The Respondent is
making fair use of the disputed name, but in a passive way. He has reserved it for future use in
circumstances in which this is justified.”
Respondent argues that
he is “making use in a passive way” that is sufficiently justified by the
current technical impediments, the actual limited number of mobile Internet
users, his lack of expertise to develop the technical setup of the site on his
own, the necessity to focus first on writing the several developments plans and
the temporary suspension of the negotiations with his IT consultant.
Respondent further
submits that he is commonly known by the domain name in dispute by a group of
friends and family members since the late seventies.
Respondent’s plan to
make information on musical instruments widely available in
Respondent denies any
intention of selling, renting or transferring the domain name to any third party, neither does he intend to prevent Complainant from
reflecting its trade mark in the .mobi domain.
Respondent points out that he has not registered the domain names
<texas-instruments.mobi>, <ti.mobi> or <texasinstruments.be>,
which are still available and he has suggested to Complainant that it should
register the domain name <texas-instruments.mobi>.
Respondent also denies
that he has any intention of disrupting the business of Complainant and submits
that Complainant has not adduced any evidence of such intention. Respondent emphasises that his proposed forum
is a non-commercial project.
Respondent cites the
decision of the learned panel in Texas Instruments Inc. v. DM, D2000-1448
(WIPO Jan. 9, 2001), where the registrations of the domain names
<texas-instruments.com>, <texas-instruments.net>, <texas-instruments.org>
and <texasinstruments.net> were in issue. The panel in that case considered explicitly
that there are circumstances where a domain name can be rightful
registered while the respondent is not the owner of a similar and/or identical
trade mark.
The Policy sets out the
basis on which a respondent might go about demonstrating his rights and
legitimate interest in a domain name.
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 without intent for commercial gain or misleadingly diverting customers in
a way which might tarnish the trade mark or service mark at issue.
Taking into account that
Complainant in the above mentioned WIPO Case No. D2000-1448, and the current
case is the same corporation, Complainant must have been very well aware of the
fact that there are circumstances where a registrant is permitted by the Policy
to register a domain name while not being the owner of a corresponding trade
mark and/or while being informed of the fact that a third party is the owner of
a corresponding trade mark.
Respondent sufficiently
examined Complainant’s products and services range prior to registering the
domain name in dispute. The fact that he
avoided to conflict or to confuse with its activities, should be considered as
an act of “good faith” rather than “bad faith.”
There is no possibility
of confusion with Complainant’s trademark as Respondent has communicated his
willingness to post a message on his planned website clarifying that
Complainant has no connection with Respondent’s site and/or to place a link to
Complainant’s official website for visitors that may have “wrongly surfed”
to Respondent’s website. Furthermore as the language of Respondent’s
website will be Dutch, Respondent has agreed to post the message in
English so that it can be more easily understood by global
visitors.
Complainant has provided
no evidence with regard to an awareness of its trade mark in
Complainant refers to
the fact that Respondent has registered other domain names containing third
party trademarks and as such that he has an established pattern of bad faith
registrations. Respondent has registered
those domain names with the intention to start some independent non-commercial alumni
personnel network platforms for companies which “had gone through” or that
potentially “would go through” an important Merger & Acquisition operation. As he has since taken the decision to focus
entirely on his .mobi portfolio, Respondent has abandoned his plans for his Merger
& Acquisition alumni fora.
Upon termination of his
plans for his Merger & Acquisition alumni
fora, he placed a clear message on his parking pages that the relevant
domain name was registered for a non-commercial project and as the project has
been terminated, the domain name is available against payment of the relevant
out-of-the-pocket charges.
Finally Respondent
alleges that Complainant is engaged in reverse domain name hijacking because
Complainant failed to apply to register the domain name in dispute during the
.mobi Sunrise Period and has now applied to have the domain name transferred to
it.
FINDINGS
This Panel finds that Complainant is the
owner of the abovementioned registrations and pending application for the trade
mark TEXAS INSTRUMENTS and that Complainant has an established goodwill throughout
the world including the
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
This Panel finds that the domain name <texasinstruments.mobi> is identical
to the trademark and service mark TEXAS INSTRUMENTS in which the Complainant
has rights.
The issues raised by Respondent alleging lack
of distinctiveness in the TEXAS INSTRUMENTS trademark are not relevant here. Neither is it relevant that Complainant has
failed to provide any evidence of the reputation of the trademark in
Complainant has provided sufficient evidence to
prove that it has a well established goodwill in the use of TEXAS INSTRUMENTS
and has acquired rights in that mark both by registration and at common law in
the United States of America and elsewhere.
Respondent has submitted that he has rights
or legitimate interests in the domain name <texasinstruments.mobi>
because he and his sister have been commonly known by that name as a musical
duo since the nineteen seventies. Given
that Respondent has engaged in a pattern of registering third-party trademarks
as Internet domain names, this assertion lacks credibility.
Respondent has also claimed that he intends
to use the domain name as the address of a forum where amateurs and lovers of
classical instruments can share information, photos, stories, non-commercial private advertisements to buy/sell musical
instruments, pieces of music and musical scorings, songs, festivals, technical
information on musical instruments. He
states that he has not made any actual use of the domain name because in his
discussions with an IT consultant he has decided to wait until mobile
technology develops. It is difficult to
believe this claim also, given that the Respondent has admitted that he was
aware of Complainants trademarks when he registered the domain name.
Furthermore Respondent has engaged in a pattern of registering well known names
and trade marks on the .mobi domain name.
On the balance of probabilities, despite his assertions to the contrary
the indications are that he has no intention of putting the domain name to a
legitimate use.
In the view of this Panel the present case
can be distinguished from both Estate of Jennings & Servis v. Submachine & Ross, D2001-1042 (WIPO Oct. 25, 2001) and 2001 White Castle Way, Inc. v. Jacobs, D2004-0001 (WIPO March 26, 2004), cited by
Respondent because in casu Respondent
has not made any use whatsoever of the domain name in issue. Neither has he made any demonstrable
preparations for such use. Furthermore
it is likely that the use to which he claims that he intends to put the domain
name would infringe Complainant’s established trademark rights in any event.
This Panel is satisfied that Respondent has
no rights or legitimate interests in the domain name <texasinstruments.mobi>.
On the balance of probabilities Respondent
noticed that Complainant had not registered its well known trademark and
business name during the .mobi Sunrise Period and decided to take predatory
advantage of the situation by registering the domain name himself. This Panel is satisfied on the evidence that
Respondent’s intention was to deprive the Complainant of the opportunity of
reflecting its TEXAS INSTRUMENTS trademark on the .mobi domain.
Respondent has been passively holding the
domain name in dispute since it was registered. His explanation that he is engaged in plans to
develop a non-commercial website is not credible. Neither does this Panel accept Respondent’s
explanation for his passive holding of the domain name: that he lacks the
technological expertise to use the domain name at present; and that he intends
to wait until mobile technology is more developed.
The fact that Respondent has registered so many other domain names that include trademarks owned by third parties and combinations of trademarks, including: <fordgm.net>, <gmford.org>, <ericssonglobalservices.net>, <ericssonmultimedia.net>, <nokia-siemens-networks.info>, <renaultnissangm.net>, <gmrenaultnissan.net>, <cggveritas.org>, <cgg-veritas.org>, <gruppobancario.com> indicates that he has registered and is using the domain name in dispute in bad faith. Respondent’s explanation that he registered many of these domain names for the purposes of establishing independent non-commercial alumni personnel network platforms for companies which “had gone through” or that potentially “would go through” an important Merger & Acquisition operation appears to be far fetched. Respondent gives no explanation as to why he might be motivated to provide such a speculative service on a non-commercial basis.
This Panel has considered Respondent’s
submissions that his passive use should be considered a fair use in the terms
described by the learned panels in Pfizer Inc v. Robichaux,
D2003-0399 (WIPO July 16,2003) and Fielding v. Corbert, D2000-1000
(WIPO Sept. 27, 2000). In casu however, because Respondent has
clearly been stockpiling domain names that are identical to and incorporate
third-party trademarks and combinations of third-party trademarks, the
indications are that he is not passively holding the domain name in dispute for
any bona fide reasons.
Furthermore for
completeness, Respondent has cited the decision of the learned panel in Texas
Instruments Inc. v. DM, D2000-1448 (WIPO Jan. 9, 2001). It is
difficult to see how that decision assists Respondent in any way as Complainant
succeeded in its application in that case.
In the circumstances, this Panel is convinced
by the evidence submitted that Respondent chose the domain name in dispute to
prevent Complainant from registering its name on the .mobi domain name.
This Panel therefore finds that Respondent
registered and is using the domain name <texasinstruments.mobi>
in bad
faith.
Finally there is no evidence whatsoever that
Complainant has engaged in reverse domain name hijacking as alleged by
Respondent.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <texasinstruments.mobi> domain name
be TRANSFERRED from Respondent to Complainant.
James Bridgman, Panelist
Dated:
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