ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION SYNECHRON HOLDINGS INC v. Zakira Begum Case No. D2024-3728 1. The Parties The Complainant is SYNECHRON HOLDINGS INC, British Virgin Islands, United Kingdom, represented by Arnold & Porter Kaye Scholer LLP, United States of America (“USA”). The Respondent is Zakira Begum, India, represented by DUNNINGTON BARTHOLOW & MILLER LLP, USA. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2024. On September 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 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 (ANONYMOUS REGISTRANT, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 18, 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 the Respondent of the Complaint, and the proceedings commenced on September 23, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2024. The Respondent sent an email communication to the Center on October 11, 2024, requesting an extension, and on October 17, 2024,
page 2 requesting suspension of the proceeding. The Center granted suspension until November 16, 2024. Upon request of the Complainant the proceeding was reinstated on November 19, 2024, and the Center confirmed that the Response due date was November 24, 2024. Following a further request for extension of the Respondent, the deadline for the Response was extended to November 26, 2024. The Respondent filed a Response on November 27, 2024. The Center notified the Parties of the Commencement of Panel Appointment Process on November 27, 2024. The Center appointed Luca Barbero as the sole panelist in this matter on November 14, 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. 4. Factual Background The Complainant is a digital consulting firm providing, amongst others, artificial intelligence (AI) solutions for business. The Complainant is the owner of the trademark SYNECHRON, which is used in connection with software related products and services for business, particularly for AI-related software products. The Complainant operates offices in several countries in connection with its business and services, including in North America, United Kingdom, Europe, Middle East, India and the Asia-Pacific region. The Complainant is the owner of several trademark registrations for SYNECHRON, including the following, as per trademark registration certificates submitted as Annex 1 to the Complaint: - United States trademark registration No. 4278596 for SYNECHRON (word mark), filed on April 4, 2012, and registered on January 22, 2013, in international classes 35, 38 and 42; - United States trademark registration No. 5231206 for SYNECHRON (figurative mark), filed on August 4, 2016, and registered on June 27, 2017, in international classes 35 and 42; - United States trademark registration No. 5231207 for SYNECHRON (figurative mark), filed on August 4, 2016, and registered on June 27, 2017, in international classes 35 and 42, which is reproduced below: The Complainant is also the owner of the domain name , which was registered on May 25, 2004, and is used by the Complainant to promote its products and services under the trademark SYNECHRON as well as for its employees’ email addresses, including for communications with vendors, customers, potential employees and others. The disputed domain name was registered on January 25, 2024, and, according to the screenshots submitted as Annex 3 to the Complaint – which have not been contested by the Respondent – , prior to the present proceeding, resolved to a website displaying a logo composed of the Complainant’s figurative mark SYNECHRON with the addition of the term “technologies”, reproduced in the same stylized character as the Complainants’ mark, and the slogan “We Partner Your Vision in to Reality”. The website was promoting digital services, with a focus on AI solutions for business, and included references to the company Synechron Technologies LLC located in Austin, Texas, allegedly having 5 years of experience, and an email address based on the disputed domain name. At the time of the drafting of the Complaint, the disputed domain name resolves to a website displaying a “Synechron Technology” logo different from the one previously displayed on the website, and promoting IT Consulting Services, software development, healthcare solutions, and IT staffing and Application development services. The website shows the company name and address of Synechron Technologies
page 3 LLC. In the “About” section, it is stated: “With over 15 years of experience in the IT consulting industry, our team has the expertise and knowledge to help small businesses succeed in today's digital landscape”. 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 disputed domain name is confusingly similar to its prior registered trademark SYNECHRON, as it reproduces the trademark in its entirety with the mere addition of the term “technologies”, which is not sufficient to prevent a finding of confusing similarity. The Complainant submits that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name since: i) the Complainant is not affiliated in any way with the Respondent and has never authorized the Respondent to register or use the disputed domain name or the SYNECHRON mark; ii) the Respondent is not commonly known by the disputed domain name or by a name corresponding to the disputed domain name; iii) the Respondent registered the disputed domain name being aware of the Complainant’s prior trademark as it fraudulently used a logo identical to the one of the Complainant to portray itself as the Complainant; iv) the Respondent has used the website to misleadingly divert the public into believing that both website and emails based on the disputed domain name were in some way affiliated with the Complainant. With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering the renown of the Complainant’s SYNECHRON mark and the fact that the Respondent initially purposely chose to adopt an identical SYNECHRON logo to that registered and used by the Complainant, whilst offering identical services to those offered by the Complainant, the Respondent registered the disputed domain name, virtually identical to the Complainant’s SYNECHRON mark, in order to take advantage of the Complainant’s reputation and its conduct amounted to opportunistic bad faith under the Policy. The Complainant also states that the Respondent’s use of the disputed domain name is particularly dangerous to the public, since confusingly similar email addresses could be used to impersonate the Complainant’s employees, providing fake job opportunities or obtaining personal information or money from prospective employees or clients. The Complainant further contends that the Respondent apparently submitted false or incomplete contact information in the WhoIs data provided by the Center, as the WhoIs information does not include the street address. B. Respondent The Respondent denies the Complainant’s allegations in particular on the second and third elements and states that, contrary to the Complainant’s assertions, it does have rights and legitimate interests in the disputed domain name and has not acted in bad faith. The Respondent contends that it has used the disputed domain name in connection with a bona fide offering of goods or services before receiving notice of the dispute. In particular, the Respondent submits that it is an entrepreneur who started her first business in January 2024, eight months before receiving a notice letter from the Complainant on August 13, 2024, under the company name “Synechron Technologies LLC”. The Complainant submits that it filed the Articles of Organization and obtained a Certificate of Formation for its company from the State of Texas on January 18, 2024, copy of which is provided as Annex 2 to the Response.
page 4 The Respondent states that it made investments in developing a website and submits as Annex 6 to the Response receipts of two payment installments made to a web designer during January and February 2024. The Respondent further submits that it received and paid invoices in connection with conducting its business and submits as Annex 9 to the Response an invoice issued to Synechron Technologies LLC from an immigration attorney concerning a transfer petition of a third party in April 2024. In addition, the Respondent states that its website makes it clear that its business offers IT staffing and healthcare solutions, which are bona fide services, and submits screenshots of its website showing the same contents as the ones currently displayed. The Respondent also claims to be commonly known by the disputed domain name as its company Synechron Technologies LLC has an employer identification number issued by the government in January 2024, copy of which is submitted as Annex 1 to the Response. In addition, the Respondent claims that it is commonly known by the name “Synechron Technologies” by independent third parties and claims to have also used an email address based on the disputed domain name to correspond with third parties. To substantiate the latter assertion, the Respondent submits as attachments to the Response: i) a letter addressed by the Respondent to the United States Citizenship Immigration Services dated October 14, 2024, including references to an email request sent by the office to the Respondent on August 29, 2024, to which the Respondent had allegedly previously replied on September 3, 2024 (Annex 7 to the Response); ii) an email sent to the Indian government by an immigration attorney on November 20, 2024, citing Synechron Technologies LLC and forwarded on November 21, 2024 to an email address based on the disputed domain name (Annex 3 to the Response); iii) an exchange of correspondence with an immigration attorney that occurred in April and May 2024 citing “Synechron Technologies” and showing use by the Respondent of an email address based on the disputed domain name to correspond to the attorney (Annex 12); and iv) a contract signed between the Respondent’s company and a third party on October 15, 2024 (Annex 5). With reference to bad faith registration and use, the Respondent contends that though it is not necessary for the Panel to consider the third element considering the Complainant has not made any prima facie showing of the Respondent’s lack of legitimate interests in the disputed domain name, the facts prove the Respondent was acting in good faith when registering the disputed domain name. The Respondent submits that it was unaware of the Complainant when registering the disputed domain name and considering it is a start-up entrepreneur with no prior business experience, it knew nothing about the distinction between trademark, domain name and business name registration. The Respondent claims to have registered the disputed domain name because it was available on the GoDaddy registrar and on the Texas State registry which sufficed to it as a clearance. Moreover, the Respondent contends that the initial use of a logo identical to that of the Complainant was merely an incident caused by the web designer entrusted by the Respondent who seemingly adopted the Complainant’s logo without informing the Respondent who, until the Complainant’s notice on August 13, 2024, was unaware of the Complainant and its rights in the mark and logo. The Respondent states that it fired the designer shortly thereafter and submits as Annex 8 to the Response copy of a letter addressed to an Indian web agency notifying termination of website development services on August 14, 2024. The Respondent further asserts that, following receipt of the Complainant’s notice, it changed the logo to the one currently in use. The Respondent also rebuts the Complainant’s contentions that the Respondent may be engaging in “fraudulent activity such as impersonating a complainant’s employees [and] providing fake job 4 opportunities” and states that it is providing real job opportunities to real candidates, as shown by a letter attached to the Response as Annex 7 addressed by the Respondent to the United States Citizenship
page 5 Immigration Services to support the VISA application of a third party that the Respondent was apparently willing to employ as consultant. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the 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 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. 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. Indeed, the Complainant has provided evidence of ownership of valid trademark registrations for SYNECHRON. The entirety of the mark SYNECHRON is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other term “technologies” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The applicable Top Level Domain (“TLD”) in a domain name, such as the generic Top Level Domain (“gTLD”) “.com” in this case, is viewed as a standard registration requirement and is thus disregarded under the first element confusing similarity test. WIPO Overview 3.0, sections 1.11.1. Therefore, 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. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 6 Having reviewed the available 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. The Respondent has submitted a Response in an attempt to rebut the Complainant’s contentions, but, in the Panel’s view, has failed to come forward with sufficient evidence demonstrating rights or legitimate interests in the disputed domain name. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark. The Complainant states that the Respondent is not commonly known by the disputed domain name. The Respondent denies the Complainant’s contention on the grounds that it incorporated a company named Synechron Technologies LLC in the United States dating back to January 2024, prior to receiving notice of the dispute by the Complainant. The Panel notes that the incorporation of a company, without further and relevant evidence of a legitimate business, cannot give rise to rights or legitimate interests. WIPO Overview 3.0, section 2.3. Most of the communications and documents submitted by the Respondent to substantiate its claim (i.e. the communication to the Indian government in Annex 3, the contract signed with a third party in Annex 5, the letter to the United States Immigration Services in Annex 7, the Services Suspension Letter in Annex 8) are dated from mid-August 2024 onwards, i.e. after the Respondent received, on August 12, 2024, a communication from the Complainant’s representative asserting the infringement of the Complainant’s rights. The Respondent also submitted in Annex 6 a payment receipt for website design, which however does not include any reference to the disputed domain name or the company Synechron Technologies LLC. The invoice and the correspondence submitted in Annexes 9 and 12, dated April and May 2024, i.e. before the Respondent’s receipt of the notice from the Complainant’s representative, show that an immigration lawyer was apparently entrusted with the preparation and filing of a petition for a Non-Immigrant Visa for a third party to be employed by the Respondent’s company. However, the Respondent has not submitted evidence of use of the name Synechron Technologies for the actual provision of products or services nor any other evidence showing that its business is actually (and commonly) known to third parties as Synechron Technologies. The Panel also notes that the information on the Respondent’s business provided on the website corresponding to the disputed domain name both before and after receipt of the Complainant’s notice are contradictory (as the website previously mentioned that the company had five years of experience whilst currently it is mentioned that it has “over 15 years of experience in the IT consulting industry”) and not consistent with the incorporation of the Respondent’s company in January 2024 and with the Respondent’s statement that it started its business in January 2024. Even if the Respondent was referring to its experience and not to that of its company, that would not be sufficient to conclude that the Respondent has rights or legitimate interests in the disputed domain name. In addition, the Panel considers that the Respondent set up its company in the United States, where the Complainant operates and is known under the “Synechron” name and where it registered and has been using its SYNECHRON mark for many years. The Panel finds that the Respondent’s statement that it failed to find out whether the term “Synechron” encompassed in the disputed domain name was already registered – as trademark and company name - and used by third parties because the Respondent is a start-up entrepreneur with no prior business experience, is not credible. Indeed, a simple search for “Synechron” on any search engine would have revealed the existence of the Complainant, its website “www.synechron.com” and its SYNECHRON products and services. Moreover, the Respondent has failed to provide any explanation as to the reason why it selected the term “Synechron”, which is not of common usage nor is it a dictionary term, in combination with the term “technologies”, which is descriptive of services provided by the Complainant under the SYNECHRON mark.
page 7 Furthermore, the Panel notes that the use of the Complainant’s figurative mark (in combination with other elements) and the promotion of services substantially identical to the ones of the Complainant on the website to which the disputed domain name resolved prior to the Respondent’s receipt of the Complainant’s notice of infringement – as shown by the screenshots submitted by the Complainant, which have not been contested by the Respondent - suggests that the Respondent, contrary to its assertions, was aware of the Complainant and its business and purposely registered and used the disputed domain name to obtain some advantage from the likelihood of association with the Complainant rather than to genuinely offer the services listed on its website. While the Respondent claims the initial inclusion of the Complainant’s figurative mark was done by the web designer, even if that claim was to be true, the Panel considers that it would not change the Panel’s assessment that it would be too coincidental that the Respondent would have chosen a disputed domain name consisting of the Complainant’s trademark with the term “technology” without knowledge of the Complainant. Therefore, the Panel finds that, according to the evidence on record, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent to misleadingly divert the consumers or tarnish the Complainant’s trademark. Therefore, the Panel finds the second element of the Policy has also been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, in light of i) the prior registration and use of the trademark SYNECHRON in connection with the Complainant’s products and services, promoted online via the website “www.synechron.com”; ii) the distinctiveness of the SYNECHRON mark for software related products and services for business, particularly for AI-related software products; iii) the composition of the disputed domain name, encompassing the Complainant’s SYNECHRON mark in combination with the term “technologies” referrable to the Complainant’s business; iv) the fact that SYNECHRON is a coined mark which does not have any meaning in the English language; v) the content of the website initially published at the disputed domain name displaying a logo incorporating the Complainant’s figurative mark and offering similar services to those offered by the Complainant; vi) the fact that the Respondent’s company was incorporated in the same country as the Complainant; and vii) the Respondent’s failure to provide plausible explanations about the rationale for its selection of the name “Synechron Technologies” and the registration of the disputed domain name encompassing the Complainant’s mark, the Panel finds that the Respondent was more likely than not aware of the Complainant’s trademark rights at the time of registration of the disputed domain name and intended to target the Complainant and its trademark. Moreover, in view of the redirection of the disputed domain name to the website described above, displaying the Complainant’s figurative mark until the Respondent received a communication from the Complainant’s representative and offering services substantially identical to the ones provided by the Complainant under the mark SYNECHRON, the Panel finds that, on balance of probabilities, the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the services offered therein, according to paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has established the third element of the Policy as well.
page 8 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. /Luca Barbero/ Luca Barbero Sole Panelist Date: December 13, 2024
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