930
Nominet UK Dispute Resolution Service
DRS 930
Cirrus Logic Inc and Mr John Lynch
Decision of Independent Expert
1. Parties
Complainant: Cirrus Logic Inc
Country: USA
Respondent: Mr John Lynch
Country: United Kingdom
2. Domain Name
www.cirruslogic.co.uk (the "Domain Name")
3. Procedural Background
The complaint was lodged on the 28 March 2003 and received in full by Nominet on the 31 March 2003. On the 3 April 2003 Nominet validated and notified the Respondent of the complaint stating that a response was due within 15 working days.
On the 16 April 2003 Nominet received the response from the Respondent which was forwarded to the Complainant on the 16 April 2003. Nominet recorded a reply on the 25 April 2003 and so the reply due date was amended by one working day. The Complainant submitted a reply on the 28 April 2003 and this was forwarded to the Respondent on the 28 April 2003.
Also on the 28 April 2003 Nominet informed the parties that the dispute was entering the informal mediation stage. On the 8 May 2003 Nominet confirmed that mediation had been unsuccessful and a proforma invoice for the referral of the dispute was issued and sent to the Complainant and a copy was forwarded to the Respondent. Nominet received the fee for an Expert's decision pursuant to paragraph 8 of the Nominet UK Dispute Resolution Service Procedure (the "Procedure") and a letter of approval to forward the case to the independent expert from the Complainant on the 21 May 2003.
On the 22 May 2003, Richard Kemp, the undersigned (the "Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. The appointment date for the Expert is 29 May 2003 and the deadline for the decision is set at 12 June 2003.
4. Outstanding Formal/Procedural Issues (if any):
There are no outstanding formal or procedural issues.
5. The Facts
The Complainant is a company incorporated in the United States with a subsidiary company called Cirrus Logic (UK) Limited incorporated under the laws of England and Wales on the 23 May 1991. On 20 October 1995, a UK registration for the trade mark CIRRUS LOGIC was issued in the name of Cirrus Logic Inc. in class 9 of the Register. A copy of the Trade Mark case details for registration No. 2013876 is annexed to the complaint (as Annex A). Cirrus Logic operates a website at www.cirruslogic.com. The Complainant registered cirruslogic.com on 11 September 2000 and a copy of the WHOIS record is annexed to the Complainant's reply (as Annex F).
The Complainant filed a complaint to Nominet in respect of the Domain Name on 28 April 2003 and the Domain Name was in existence at the time of the initial complaint. The Respondent registered the Domain Name on 17 February 2001.
6. The Parties' Contentions:
Complainant:
The Complainant's contentions are summarised as follows:-
a. The mark "CIRRUS LOGIC" is a registered trade mark held by the Complainant which was registered on the 20 October 1995. The Complainant submits a copy of the UK Patent Office Trade Marks Database Search. The company Cirrus Logic Inc. was incorporated in the USA in 3 February 1984 and has not subsequently changed its name. The complainant submits a copy of a statutory declaration of the Complainant's Vice President of European Sales confirming the details of incorporation (as Annex E).
b. The Complainant has since incorporation developed a substantial reputation in the name CIRRUS LOGIC throughout the UK, Europe and the USA. The Complainant submits a copy of the United States Patent and Trademark Office search print out (as Exhibit MKN4 to Annex E).
c. The products of the Complainant have been advertised extensively in the UK, Europe and the USA. The Complainant employed the services of a third party to provide public relations and advertising. The Complainant submits copies of five sample advertisements (as Annex B).
d. The approximate turnover annual for the years 1999 - 2001 including some sales in 2002, in the UK amounts to $64,138,801. The Complainant submits a copy of a statutory declaration of the Complainant's Vice President of European Sales (as Annex E).
e. The Domain Name is identical and/or similar to a mark in which the Complainant has rights.
f. The Domain Name in the hands of the Respondent is an Abusive Registration.
g. The Domain Name website a copy of which is attached as Annex D contains a specific offer for the sale of the Domain Name for £8000.
h. The Respondent has registered the Domain Name primarily for the purposes of selling renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent's documented registration and associated costs or
i. The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
j. The Respondent has not made legitimate or fair use of the Domain Name.
k. The Complainant would legitimately have desired to register the domain name and this would have been obvious to the Respondent at the time of Registration
l. The Domain Name was registered or otherwise acquired in a manner which, at the time when the registration took place, took unfair advantage of, or was unfairly detrimental to the Complainant's rights or
m. The Domain Name has been used in a manner which takes unfair advantage of, or is detrimental to the Complainants Rights
n. Accordingly this Domain Name registration is without question an abusive registration and the Complainant requests that the Domain Name is transferred to the Complainant.
Respondent:
The Respondent's response is summarised as follows:-
a. The Domain Name is registered in the name of the Respondent.
b. The registration of the Domain Name was made in good faith in an attempt to reserve what appeared to be a distinctive/memorable name that could be obtained and used for the purpose of business, personal interest, educational or for informational uses.
c. The Domain Name consists of two words which are of common usage and are defined in the English dictionary.
d. The definition of the word Cirrus which forms the first part of the Domain Name has possible uses for aviation, meteorology, science and biology. The word Cirrus has also been used by many organisations.
e. The word 'Cirrus' combined the word 'Logic' which forms the second part of the Domain Name does not make the Domain Name any less generic.
f. The combination of the words 'Cirrus' and 'Logic' can be used in a descriptive way to refer to many different fields of study and scientific reference (based on dictionary definition) and it was for these reasons that the domain name was registered in good faith.
g. The Complainant was aware of the Respondent's registration for two years before the complaints procedure was invoked. The Complainant has shown little or no interest in registering the Domain Name.
h. The Complainant's submissions in relation to the size of company are inconsistent with the failing on their behalf to register the Domain Name first.
i. The Complainant has had the opportunity since the incorporation of its UK subsidiary company to register the Domain Name but yet had failed to do so.
j. A letter outlining a proposal which could potentially have lead to the resolution of the dispute was made but the Complainant has yet to confirm a response
7. Discussion and Findings:
General
Under paragraph 2 of the Nominet UK Dispute Resolution Service Policy (the "Policy") the Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts that:-
(i) the Complainant has Rights in respect of a name which is identical or similar to the Domain Name; and
(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.
"Rights" and "Abusive Registration" are defined in paragraph 1 of the Policy.
The Complainant does make these assertions in the Complaint. The Expert therefore finds that the Respondent must submit to these proceedings.
Burden of Proof
The Complainant must prove both elements (i) and (ii) above on the balance of probabilities to succeed in its complaint.
Complainant's Rights
"Rights", for the purposes of the Policy, "includes, but is not limited to, rights enforceable under English law". The Policy also provides that "a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".
When assessing whether the Complainant has Rights in an identical or similar name to the Domain Name, the first and second level suffixes of the Domain Name, being generic should be discounted. The questions are therefore (a) whether the Complainant has Rights in the name "Cirruslogic", and (b) if so, whether the Complainant can rely on such Rights in these proceedings.
The Complainant:
* has sent a copy of a statutory declaration confirming the incorporation of Cirrus Logic Inc and its subsidiary Cirrus Logic (UK) Ltd.
* has sent a copy of the Patent Office Trademarks Case details for the trade mark "CIRRUS LOGIC" whose specification covers integrated circuits included in Class 9
* has sent a copy of the United States Patent and Trademark Office case details for the trade mark "CIRRUS LOGIC"
* has sent copies of web-pages advertising the sale of the Domain Name
* uses the domain name 'cirruslogic.com'.
From the cirruslogic.com website, the business of the Complainants is described as selling various integrated circuits. It follows that the Expert finds that "Cirrus Logic" is not wholly descriptive of the Complainant's business.
The Expert finds on the balance of probabilities the Complainant has Rights in a name identical to the Domain Name (discounting the first and second level suffixes), which may be relied upon in these proceedings.
Abusive Registration
An "Abusive Registration", for the purposes of this Policy, is "a Domain Name which either:-
(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights".
The Policy provides non-exhaustive lists of factors which may be evidence that a domain name is an Abusive Registration (at paragraph 3 of the Policy) and factors which may be evidence that the Domain Name is not an Abusive Registration (at paragraph 4).
Paragraph 3(a) sets out at paragraphs (i)(A) and (B) and (ii) two factors pointing towards an Abusive Registration as
"i Circumstances that the Respondent has registered or otherwise acquired the Domain Name:
A primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out of pocket costs directly associated with acquiring or using the Domain Name;
B as a blocking registration against a name or make in which the Complainant has Rights;"
"ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant".
Paragraphs 4(a)(i) and (ii) set out on the list of non-exhaustive factors pointing away from an Abusive Registration factors including the following:
"i. Before being informed of the Complainant's dispute the Respondent has:
A used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name; or
C made legitimate non-commercial or fair use of the Domain Name; or
ii The Domain Name is generic or descriptive and the Respondent is making fair use of it."
The Expert finds as follows:-
a. On the balance of probabilities the Complainant has Rights in a name similar to the Domain Name which can be relied upon in these proceedings.
b. The Complainant must then demonstrate that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
c. The Complainant submitted to Nominet that the Respondent registered the Domain Name 'primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name' (within paragraph 3(a)(i)(A) of the Policy) or 'as a blocking registration against a name or mark which the Complainant has rights or primarily for the purpose of unfairly disrupting the business of the Complainant' (within paragraph 3(a)(i)(B)).
d. The Complainant has submitted to Nominet in the form of Annex D to its Complaint a copy of a webpage operating under the name DOMRESERVE, a webpage automatically re-directed to from the Domain Name. Annex D states the Domain Name's availability for purchase. The Complainant has also submitted to Nominet in the form of Annex E a more recent copy the webpage of Annex D. Annex E states that the Domain Name is available for sale for a minimum offer of £8000.
e. The Complainant's Complaint was sent to the Respondent on 3 April 2003. The Respondent filed the Response on 15 April 2003. It was open to the Respondent in his Response to contest that the Domain Name was for sale, at all or with his authority, or for a minimum offer of £8000, or to state that this amount was not excessive in relation to the Respondent's documented out of pocket costs. The Expert notes that the Response did not make any mention of the offer to sell the Domain Name or seek to deny or contest what the Complainant said in its Complaint.
f. Expert finds, on the preponderance of probabilities that:
i. The Respondent intended to sell or otherwise transfer the Domain Name to the Complainant for a minimum offer of £8000;
ii. The sum of £8000 constitutes consideration in excess of the Respondent's likely out-of-pocket costs associated with the registration of the Domain Name; and
iii. The Respondent having shown in his Response no other use, actual or intended, for the Domain Name, it was registered or acquired primarily for the purpose of sale or transfer to the Complainant or to a competitor of the Complainant;
and accordingly that the circumstances at paragraph 3(a)(i)(A) exist in relation to the Domain Name.
g. Equally, the Expert finds, on the balance of probabilities, that the Respondent registered or otherwise acquired the Domain Name as a blocking registration against a name in which the Complainant has Rights (paragraph 3(a)(i)(B)) and/or primarily for the purpose of unfairly disrupting the Complainant's business (para 3(a)(i)(C)).
h. The Respondent has submitted that the registration of the Domain Name "was made in good faith in an attempt to reserve what appeared to be a distinctive/memorable name ..." and denies that the registration is an abusive registration.
i. The Expert finds that the Domain Name is not descriptive of the products or services provided by the Complainant and that the Respondent has not produced any evidence to show that he is making fair use of the Domain Name (within Paragraph 4(a)(ii) of the Policy).
j. Accordingly the Expert finds that the Domain Name is an Abusive Registration within the meaning of the Policy, as:
i. registered or otherwise acquired in a manner which, at the time when the registration of acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or
ii. having been used in a manner which was unfairly detrimental to the Complainant's Rights.
8. Decision:
The Expert finds that on the balance of probabilities the Complainant has Rights in a name which is identical to the Domain Name and that the Domain Name , in the hands of the Respondent, is an Abusive Registration. The Expert therefore grants the Complainant's requested remedy of transfer, and directs that the Domain Name be transferred to the Complainant.
Richard Kemp
9 June 2003