ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Synopsys, Inc. v. Catherine Black Case No. D2024-0112 1. The Parties Complainant is Synopsys, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France. Respondent is Catherine Black, United States. 2. The Domain Name and Registrar The Disputed Domain Name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2024. On January 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 12, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf Kalkofnsvegur) and contact information in the Complaint. The Center sent an email communication to Complainant on January 15, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 16, 2024. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 7, 2024. The Center appointed Richard W. Page as the sole panelist in this matter on February 16, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
page 2 4. Factual Background Founded in 1986, Complainant is a United States corporation engaged in electronic design automation. Complainant is one of the world’s leading providers of solutions for designing and verifying advanced silicon chips, and for designing next-generation processes and models required to manufacture those chips. Complainant's technology is at the heart of innovations that are changing the way people work and play – self driving cars, machines that learn, and lightning-fast communication across billions of devices in the datasphere. These breakthroughs are ushering in the age of Smart Everything – where devices are getting smarter and connected, and security is an integral part of the design. Powering this new era of innovation are high-performance silicon chips and exponentially growing amounts of software content. Complainant is at the forefront of Smart Everything with one of the world’s most advanced technologies for chip design, verification, IP integration, and software security and quality testing. Complainant helps its customer innovate from silicon to software so they can bring amazing new products to life. Today, Complainant is a publicly-traded company (Nasdaq SNPS), employing over 16,000 employees. In the fourth quarter of 2023, Complainant reported over USD 5.8 billion in revenue. Complaint is the owner of numerous domain names consisting of or including the SYNOPSYS Mark, registered under various generic Top-Level Domains (“gTLDs”) including from which it operates its main consumer-facing website. Complainant has also made substantial investments to develop a strong online presence by being active on various social-media platforms. For instance, Complainant has over 580,000 followers on LinkedIn, over 25,000 followers on Facebook, and over 21,000 followers on Twitter. In addition to its strong online presence, Complainant has secured ownership of trademark registrations for SYNOPSYS in jurisdictions throughout the world, including without limitation the following: European Union Registration No. 000181172 registered on February 1, 1999; United States Registration No. 1601521 registered on June 12 1990; and United States Registration No. 1618482 registered on October 23, 1990. The Disputed Domain Name was registered on November 13, 2023, and previously resolved to a website which impersonated the official website of Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. The Disputed Domain Name previously resolved to a website that sought to impersonate Complainant by reproducing its official website at featuring the Synopsys logo and identical graphics, wording, contact details, office locations, and links to the same Synopsys social-media page as those featured on Complainant’s official website.
page 3 Complainant asserts that Respondent has used the Disputed Domain Name in an attempt to mislead unsuspecting Internet users seeking Complainant’s official website. Such activity precludes any bona fide or legitimate use by Respondent. Complainant further asserts that, upon being made aware of the abusive use of the Disputed Domain Name, it submitted a request to the Registrar for suspension of the Disputed Domain Name. The Disputed Domain Name was subsequently place in “ClientHold” status and no longer resolves to an active web page. Complainant further asserts that Respondent has not been commonly known by the Disputed Domain Name. Complainant alleges that the registration of the Dispute Domain Name was over 30 years after registration of the SYNOPSYS Mark, which means that Respondent had actual knowledge of Complainant’s rights at the time she registered the Disputed Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. Paragraph 4(a) of the Policy directs that Complainant must prove each of the following three elements: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the SYNOPSYS Mark in which Complainant has rights; and, ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the SYNOPSYS Mark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7. Complainant has shown rights in respect of the SYNOPSYS Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the SYNOPSYS Mark is reproduced within the Disputed Domain Name. Accordingly, the disputed domain name is identical and confusingly similar to the SYNOPSYS Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established.
page 4 B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in the Disputed Domain Name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of Respondent. As such, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name (although the burden of proof always remains on Complainant). If Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the SYNOPSYS Mark. Panels have held that the use of a domain name for illegal activity here, claimed as impersonation/passing off can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the SYNOPSYS Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
page 5 (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the SYNOPSYS Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product on your website or location. The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of the Disputed Domain Name in bad faith. The Panel finds that Complainant has proven the requirements of paragraph 4(b)(iv) of the Policy. As detailed above, the Disputed Domain Name previously resolved to a website that sought to impersonate Complainant and its official website to attract internet users for commercial gain. Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. The Panel finds that Complainant has established the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant. /Richard W. Page/ Richard W. Page Sole Panelist Date: March 1, 2024
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