Silicon Laboratories Inc. v PrivacyProtect.org / Domain Admin ID#10760
Claim Number: FA1208001458016
Complainant is Silicon Laboratories Inc. (“Complainant”), represented by Alison Davis Frey, Texas, USA. Respondent is PrivacyProtect.org / Domain Admin ID#10760 (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <esiliconlabs.com>, registered with Good Domain Registry PVT LTD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2012; the National Arbitration Forum received payment on August 14, 2012.
On August 15, 2012, Good Domain Registry PVT LTD. confirmed by e-mail to the National Arbitration Forum that the <esiliconlabs.com> domain name is registered with Good Domain Registry PVT LTD. and that Respondent is the current registrant of the name. Good Domain Registry PVT LTD. has verified that Respondent is bound by the Good Domain Registry PVT LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@esiliconlabs.com. Also on August 15, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
a) Complainant has rights in the SILICON LABS mark.
i. The mark is used in connection with mixed-signal integrated circuits.
ii. Complainant is the owner of a United States Patent and Trademark Office (“USPTO”) trademark registration for the SILICON LABS mark (Reg. No. 2,301,024 registered December 14, 1999).
b) The <esiliconlabs.com> domain name is confusingly similar to Complainant’s mark.
c) Respondent lacks rights and legitimate interests in the <esiliconlabs.com> domain name.
i. Respondent is not commonly known by the <esiliconlabs.com> domain name.
ii. Respondent offers products and services in direct competition with those that Complainant provides.
d) Respondent registered and is using the <esiliconlabs.com> domain name in bad faith.
i. Respondent has engaged in a pattern of bad-faith registration of domain names.
ii. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the SILICON LABS Marks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its SILICON LABS mark.
2. Respondent’s <esiliconlabs.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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."
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.
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.”).
Complainant contends that it has rights in the SILICON LABS mark. Complainant asserts that the mark is used in connection with mixed-signal integrated circuits. Complainant provides the Panel with evidence of its ownership of a USPTO trademark registration of the SILICON LABS mark (Reg. No. 2,301,024 registered December 14, 1999). Panels have found that the registration of a mark, regardless of the location of the parties, is evidence of rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the SILICON LABS mark pursuant to Policy ¶ 4(a)(i).
Complainant also asserts that the <esiliconlabs.com> domain name is confusingly similar to the SILICON LABS mark. The Panel notes that Respondent removes the space found in Complainant’s mark and adds the letter “e” and the generic top-level domain (“gTLD”) to Complainant’s mark in the disputed domain name. In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel found that the addition of a single letter increases rather than decreases similarity. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel held that the deletion of spaces in a mark and the addition of a gTLD are changes that are irrelevant to a Policy ¶ 4(a)(i) determination. Therefore, the Panel finds that Respondent’s <esiliconlabs.com> domain name is confusingly similar to the SILICON LABS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS record for the <esiliconlabs.com> domain name lists “PrivacyProtect.org / Domain Admin ID#10760” as the domain name registrant. Panels have found that the WHOIS record is often a clear indicator of whether or not a respondent is commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, the Panel finds that Respondent is not commonly known by the <esiliconlabs.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name. Complainant contends that Respondent sells products and services in direct competition with those that Complainant provides in the mixed-signal integrated circuit industry under the name VenMSOL. Panels have found that operating a competing business via a disputed domain name is not protected by Policy ¶¶ 4(c)(i) and 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent’s use of the <esiliconlabs.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent has engaged in a pattern of bad-faith registration of domain names. Complainant asserts that there are many instances in which Respondent’s alias “PrivacyProtect.org” has been ordered to transfer the domain name at issue to the respective complainant. See Royal Bank of Scotland Grp. Plc v. PrivacyProtect.org, FA 1032003 (Nat. Arb. Forum Sept. 10, 2007); see also Vanguard Trademark Holdings USA LLC v. PrivacyProtect.org, FA 1338228 (Nat. Arb. Forum Sept. 9, 2009); see also Target Brands, Inc. v. PrivacyProtect.org, FA 1371798 (Nat. Arb. Forum Mar. 30, 2011). In Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006), the panel held that numerous past instances of bad faith registrations indicate that future disputed domain names were registered and are used in bad faith. Therefore, the Panel finds that Respondent has developed a pattern bad faith registration and use of domain names pursuant to Policy ¶ 4(b)(ii).
Complainant asserts that Respondent registered and is using the <esiliconlabs.com> domain name in bad faith. Complainant notes that the disputed domain name resolves to a website offering goods and services in competition with Complainant’s offerings. Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the SILICON LABS marks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. According to Complainant, Respondent attempts to capitalize on Complainant’s reputation in the technology industry and the goodwill associated with the SILICON LABS marks by using the disputed domain name, incorporating Complainant’s mark, for Respondent’s website that offers competing products and services. Therefore, the Panel finds that Respondent’s registration and use of the <esiliconlabs.com> domain name was and is in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <esiliconlabs.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 24, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page