WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Synplicity, Incorporated v. Brad Balla
Case No. D2001-1000
1. The Parties
The Complainant in this administrative proceeding is Synplicity, Incorporated, a California corporation with a principal place of business at 935 Stewart Drive, Sunnyvale, California 94085, United States of America.
The Respondent is Brad Balla of #404 115-2nd Avenue SW, Calgary, Alberta T2P 3C6, Canada.
2. The Domain Name and Registrar
This dispute concerns the Domain Name ("the Domain Name").
The registrar with whom the Domain Name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170-5142, United States of America.
The Domain Name was registered on April 24 2001.
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on August 7, 2001, and in hardcopy on August 8, 2001. Payment in the required amount to the Center has been made by the Complainant.
On August 8, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.
On August 16, 2001, the administrative proceeding began.
On August 20, 2001, a response was received from the Respondent.
On, September 28, 2001, a "Notification of Appointment of Administrative Panel and Projected Decision Date" ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant�s request, the appointment notification informed the parties that the administrative Panel would comprise of one Panelist, Clive Elliott.
On October 5, 2001, a decision was made.
4. Factual Background
The Complainant is the owner of the trademark SYNPLIFY for use with computer software for computer-aided electronic circuit design. The mark has been in use with the goods since August 1995. The Complainant owns registrations and applications for registrations in the United States and throughout the world. The Complainant relies on the following illustrative registrations for SYNPLIFY:
Country
Registration No.
Date of Registration
United States
1,981,562
June 18, 1996
Canada
TMA529423
June 19, 2000
CTM
626838
January 20, 1999
Japan
4472029
May 11, 2001
The Respondent says he provides a database where VHDL and Verilog programmers can share codes, ask questions and search for answers to problems.
5. Parties� Contentions
A. Complainant
The Complainant states that it is known throughout the world as offering computer software for computer-aided electronic circuit design and related products and services under the mark SYNPLIFY.
It is submitted that the second level domain name in the address is identical to the Complainant's mark SYNPLIFY and that persons encountering the Domain Name will believe it emanates from, is endorsed by, or is licensed by the Complainant.
It is also submitted that the Respondent has not used or made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
The Complainant claims that the Respondent is attempting to seek commercial gain by attracting the Complainant's customers by using the Complainant's trademark to its site, which appears to provide or will provide goods and services in the identical field as the Complainant. It is noted, a review of the Respondent's web site as reflected on July 31, 2001, reveals the Respondent appears to be offering goods and/or services in the field of VHDL & Verilog Development. The web site further touts the Respondent as an "information source for VHDL & Verilog Design, Testbench Design & Development." While the web site also notes the site is currently under construction and to please check back at a later time, the Complainant notes in the "option" bar listing: "Home"; "VHDL"; "Verilog"; "Contacts"; "Mail Form" and "Links," the web site, upon clicking on the button "Mail Form" links to the Respondent's web page /mail_form1.htm offering an e-mail contact apparently at Telelinker Technologies.
The Complainant submits this is clear evidence of the Respondent's bad faith in attempting to divert the Complainant's customers to the Respondent for commercial gain. It is contended that at the very least, existing and potential customers of the Complainant searching for the Complainant's SYNPLIFY product are routed to the Respondent's web page. The Complainant contends such action gives the appearance that the Respondent is affiliated, approved or some how connected to the Complainant. Accordingly, it is said that this activity interferes with the business of the Complainant and creates a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the web site.
The Complainant submits there can be no doubt that the Respondent is attempting to capitalize on the Complainant's trademark. Further, the Respondent appears to offer goods and/or services in the identical field as the Complainant, and as such is a competitor of the Complainant. It is argued that the Respondent has blatantly attempted to capitalize on the Complainant's mark by using the Complainant's trademark to attract customers to its own web site. The intentions of the Respondent are apparent. Respondent has therefore made clear in a variety of ways that the intent in registering and using the Domain Name is primarily for the purpose of seeking commercial gain by using the Complainant's trademark.
The Complainant points out that it was alerted by its customers of the Respondent's Domain Name registration and web site when such customers attempted to locate information regarding the Complainant's product SYNPLIFY. The Complainant submits it has received information demonstrating actual confusion on the part of its customers because of the Respondent's use of its mark in the Domain Name.
B. Respondent
The Respondent says that the Complainant to, his knowledge does not offer design of circuit designs, but only tools for synthesis of designs. This web site does not make any reference to the following; Synplify, synthesis or any services or products offered by the Complainant. It is a non-profit information resource for vhdl & verilog programmers, so that they may share ideas and help each other with problems.
The Respondent says the Domain Name is not and has not been used for gain or profit. The Complainant states person's searching for their products are directed to Respondent's page and would assume some affiliation with their product. However the Respondent notes there is no reference to the Complainants name, products or services.
The Respondent claims to have legitimate interest and is making a legitimate noncommercial use & fair use of the Domain Name. The Respondent says that a search was preformed using Network Solutions search tool for registerable domain names. Through the process of arriving at the name in question a number of prior selections (simple simplify ) were not registerable, but after repeated searches of similar names the name was found to be a registerable name.
Finally, it is submitted the Domain Name is being used in a noncommercial web site, the web site does not misrepresent itself. Accordingly, it is said that services offered by this web site cannot be confused in any way with the services or products offered by the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- The Domain Name is identical or confusingly similar to the trade mark; and
- The Respondent has no right or legitimate interest in respect of the Domain Name; and
- The Domain Name has been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Domain Name Identical to or Confusingly Similar
The Complainant is alleged to be the owner of the trademark SYNPLIFY for use with computer software for computer-aided electronic circuit design having used the mark since August 1995 and having registered the mark in the United States and in other countries. The Respondent does not put this in dispute.
The trademark SYNPLIFY represent an unusual representation of the word "Simplify" It is assumed, without evidence or submission to the contrary, that SYNPLIFY has no particular well known meaning other than as a trademark. If the Complainant has made extensive worldwide use of the term in promoting its goods and services, it is likely that it has acquired some protectable reputation and/or goodwill in the term. The Respondent does not deny such a reputation.
In view of the above it is found that the trademark is a trademark in which the Complainant has rights and that the Domain Name is confusingly similar if not identical thereto.
No Right or Legitimate Interest
The Complainant states that it is known throughout the world as offering computer software for computer-aided electronic circuit design and related products and services under the mark SYNPLIFY. The Respondent, in turn, provides a database where VHDL and Verilog programmers can share codes, ask questions and search for answers to problems. The Respondent claims to have legitimate interest and is making a legitimate noncommercial use & fair use of the Domain Name for this purpose. However, it is apparent from the Complainant�s web site that it supplies products that deal in VHDL & Verilog hardware description languages. The mere fact that the Respondent's use is alleged to be non commercial does not render it allowable if it would infringe the Complainant�s rights in its trademark.
The Respondent's argument seems to be, even if the parties are both involved in a related area and deal in the same type of software or services, users will soon realize on reaching the Respondent's site, that it is not being operated by the Complainant. This argument overlooks the power of first impressions and the benefit of getting users with an interest in VHDL & Verilog hardware description languages to access the Respondent's site, even if for alleged non-commercial purposes.
Given the Complainant�s rights in the trade mark SYNPLIFY and for the reasons given above it is found that the Respondent has no right or legitimate interest in respect of the Domain Name for this type of use.
Domain Name Registered and Being Used in Bad Faith
On the evidence it appears that the reputation, goodwill and registration rights in the trade mark SYNPLIFY existed prior to the date on which the Domain Name was registered. On this basis and for the other reasons identified above it is found that the Domain Name was registered in bad faith. It is found it is being used in bad faith as it is identical to the Complainant's mark SYNPLIFY and it is reasonable to infer that some persons encountering the Domain Name will believe it emanates from, is endorsed by, or is licensed by the Complainant.
In view of the above this ground is made out.
7. Decision
Therefore, and in consideration to the Complaint�s compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4 (a) (i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14 (a) and (b) and 15 (a) of the Rules, this Panel decides:
(1) that the Domain Name registered by Respondent is identical and confusingly similar to the trade mark SYNPLIFY
(2) that Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.
Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3 (c) and 4 (i) of the Policy, that the domain name be transferred to, the Complainant, Synplicity, Incorporated.
Clive L. Elliott
Sole Panelist
Dated: November 2, 2001
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