ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Synopsys, Inc. v. 林藏 Case No. D2024-2387 1. The Parties The Complainant is Synopsys, Inc., United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France. The Respondent is 林藏, Hong Kong, China. 2. The Domain Name and Registrar The disputed domain name is registered with Name.com, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2024. On June 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on June 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2024. The Center appointed Peter Burgstaller as the sole panelist in this matter on July 12, 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 The Complainant is a United States based corporation engaged in electronic design automation, especially in designing and verifying advance silicon chips. The Complainant has registered several SYNOPSYS trademarks around the world, e.g. - Australian trademark registration (word), Registration No. 607361, registered July 22, 1993; - European Union trademark registration (word), Registration No. 181172, registered February 1, 1999; - U.S. of Amerika trademark registrations (word), Registration No. 1601521, registered June 12, 1990 and Registration No. 1618482, registered October 23, 1990 (Annex 9 to the Complaint). The Complainant moreover owns several SYNOPSYS domain names, inter alia registered June 27, 1989, registered April 30, 2002, registered December 22, 2011, registered April 10, 2003, registered May 31, 2005 (Annex 6 to the Complaint). The Complainant provides its business website under the domain name (Annex 7 to the Complaint) and has a strong online presence also on various social-media platforms (Annex 8 to the Complaint). The disputed domain name was registered on January 22, 2024 (Annex 1 to the Complaint). At the time of filing the Complaint, the disputed domain name did not resolve to an active website. However, the Complainant provides evidence which shows that the URL “https://www.synopsys.pro/index/user/login” previously resolved to a login page displaying the Complainant’s SYNOPSYS mark and the URL “https://www.synopsys.pro/index/user/rcon” previously resolved to a webpage displaying a privacy policy supposedly drafted by the Complainant (Annex 10 to the Complaint). Further, the Respondent was previously the registrant of the domain names and (Annexes 11 and 12 to the Complaint). 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the SYNOPSYS trademark is distinctive, famous, and well-known around the world. The Complainant notes that the disputed domain name contains the SYNOPSYS trademark in its entirety. The Complainant submits that it is therefore inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain name since the Respondent was previously the registrant of the domain names and targeting the Complainant, for which a UDRP panel ordered their transfer to the Complainant. See Synopsys, Inc. v. 林藏 (Lin Zang), WIPO Case No. D2023-5253. Further, the Complainant has never assigned, granted, licensed, or in any way authorized the Respondent to register or use the SYNOPSYS trademark in any manner. the Complainant notes that the disputed domain name does not resolve to an active website. However, the URL “https://www.synopsys.pro/index/user/login” previously resolved to a login page displaying the Complainant’s SYNOPSYS mark and the URL “https://www.synopsys.pro/index/user/rcon” previously resolved to a webpage displaying a privacy policy supposedly drafted by the Complainant.
page 3 Finally, the Complainant asserts that the Respondent is or was associated with several other trademark-abusive domain names which is part of a pattern of conduct of preventing trademark owners from reflecting their trademarks in corresponding domain names, which also constitutes bad faith under the Policy. Hence, the Complainant contends, that based on the totality of these factors, it is clear that the Respondent is acting in bad faith with the intent to create a likelihood of confusion with the Complainant’s mark and legitimate website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has been registered or 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 Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the mark SYNOPSYS is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The generic Top-Level Domain (“gTLD”) (“.pro” in this case) is typically viewed as a standard registration requirement and as such is disregarded under the first element identity or confusing similarity test. WIPO Overview 3.0, section 1.11.1. Based on the available record, the Panel finds the first element of the Policy has been established. 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. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to
page 4 come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, since it has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to register or use the SYNOPSYS trademark in any manner. The Respondent is not known under the disputed domain name and the disputed domain name is not being used for a bona fide offering of goods or services. Furthermore, the nature of the disputed domain name, and the fact that the entirety of the mark SYNOPSYS is reproduced within and is identical to the Complainant’s mark cannot be considered fair use as these falsely suggest an affiliation with the Complainant that does not exist. WIPO Overview 3.0, section 2.5.1. The Respondent did not reply and hence has not rebutted the Complainant’s contentions. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith As stated in many decisions rendered under the Policy, both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that: - the disputed domain name was registered by the Respondent in bad faith; and - the disputed domain name is being used by the Respondent in bad faith. (i) The Complainant has established rights in the registered trademark SYNOPSYS, long before the registration of the disputed domain name. Further, the trademark SYNOPSYS is distinctive and well-known. Moreover, the Respondent was previously the registrant of the domain names and which makes it inconceivable for this Panel that the Respondent has registered and used the disputed domain name without knowledge of the Complainant’s rights. Further, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely-known trademark by an unaffiliated entity (as it is in the present case) can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent. (ii) The disputed domain name is also being used in bad faith: Although there is no evidence that the disputed domain name is being actively used or resolved to a website with substantive content, panels have found that the non-use of a domain name (including a blank or “coming soon” or “parking” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. In the present case the URL “https://www.synopsys.pro/index/user/login” previously resolved to a login page displaying the Complainant’s SYNOPSYS logo and the URL “https://www.synopsys.pro/index/user/rcon” previously resolved to a webpage displaying a privacy policy supposedly drafted by the Complainant, which clearly is evidence of bad faith within the concept of the third element of the Policy. Furthermore, this Panel concludes that the disputed domain name is being used in bad faith, putting emphasis on the following: - the Complainant’s trademark SYNOPSYS is distinctive and well-known and has a strong online presence; - the Respondent previously was the registrant of two domain names targeting the Complainant;
page 5 - the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name; - the Respondent is or was associated with several other trademark-abusive domain names which is part of a pattern of conduct of preventing trademark owners from reflecting their trade marks in corresponding domain names; and - there is no conceivable plausible good faith use with regard to the disputed domain name. The evidence and documents produced and put forward by the Complainant together with the fact that the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain name further supports the finding of bad faith. Based on the available record, the Panel finds that the 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 the Complainant. /Peter Burgstaller/ Peter Burgstaller Sole Panelist Date: July 25, 2024
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