Silicon Laboratories Inc. v. Chris Carter
Claim Number: FA0902001249999
Complainant is Silicon
Laboratories Inc. (“Complainant”), represented by Alison
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <siliconlabs.com>, registered with Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 2, 2009.
On February 27, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <siliconlabs.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 23, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@siliconlabs.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 26, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <siliconlabs.com> domain name is identical to Complainant’s SILICON LABS mark.
2. Respondent does not have any rights or legitimate interests in the <siliconlabs.com> domain name.
3. Respondent registered and used the <siliconlabs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Silicon Laboratories Inc., is a leader in the mixed-signal integrated circuit industry. Since 1996, Complainant has continuously operated under numerous marks, such as the SILICON LABS mark, which Complainant has registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,301,024 issued December 14, 1999).
Respondent registered the <siliconlabs.com> domain name on November 7, 2003. The disputed domain name resolves to a web page that displays advertisements for unrelated and competitive third parties.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s registration of its SILICON LABS mark with the USPTO adequately confers rights in the mark under Policy ¶ 4(a)(i) to Complainant. See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Respondent’s <siliconlabs.com> domain name
merely incorporates Complainant’s entire SILICON LABS mark, while removing the
space in between the words and adding the generic top-level domain “.com.” The Panel finds that neither change
sufficiently distinguishes the disputed domain name from the mark. See
Diesel v. LMN, FA 804924 (Nat. Arb.
Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to
complainant’s mark because “simply eliminat[ing] the space between terms and
add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to
differentiate the disputed domain name from Complainant’s VIN DIESEL mark under
Policy ¶ 4(a)(i)”); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to the complainant’s BODY
BY VICTORIA mark). Thus, the Panel
easily finds that the disputed domain name is identical to Complainant’s mark
under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has established a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
There is no evidence in the record that suggests Respondent is commonly known by the disputed domain name. The WHOIS information lists Respondent as “Chris Carter,” and there is no assertion of any authorization on behalf of Respondent to use Complainant’s mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent’s disputed domain name resolves to a website that
features links to third parties that are either unrelated or competitive with
regards to Complainant. Because the
Panel infers that Respondent receives commercial gain via click-through fees,
the Panel finds that Respondent has not created a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8,
2007) (concluding that the operation of a pay-per-click website at a
confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate
noncommercial or fair use, regardless of whether or not the links resolve to
competing or unrelated websites or if the respondent is itself commercially
profiting from the click-through fees); see
also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27,
2007) (holding that the operation of a pay-per-click website at a confusingly
similar domain name was not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that
promotes Complainant’s direct competitors with hyperlinks and
advertisements. This use clearly
disrupts Complainant’s business as it encourages Internet users to conduct
business with Complainant’s competitors.
The Panel therefore finds that Respondent registered and is using the
disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a
commercial search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names); see also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding that the respondent registered the domain name in question
to disrupt the business of the complainant, a competitor of the respondent).
The Panel also finds that Respondent’s confusingly similar
disputed domain name, which resolves to a commercial website promoting
Complainant’s competitors and unrelated third parties, creates a likelihood of
confusion as to Complainant’s affiliation and endorsement of the disputed
domain and corresponding website, which constitutes bad faith registration and
use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also Zee TV USA, Inc. v. Siddiqi,
FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged
in bad faith registration and use by using a domain name that was confusingly
similar to the complainant’s mark to offer links to third-party websites that
offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <siliconlabs.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 6, 2009
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