Synopsys, Inc. v Anton Kim

WIPO Case No. D2025-0111

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Synopsys, Inc. v. Anton Kim

Case No. D2025-0111

1. The Parties

The Complainant is Synopsys, Inc., United States of America (“United States”), represented by Hogan

Lovells (Paris) LLP, France.

The Respondent is Anton Kim, United States.

2. The Domain Name and Registrar

The disputed domain name <synopsys-us.com> 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 January 13, 2025. connection with the disputed domain name. On January 13, 2025, 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 (Registration Private / Domains By Proxy, LLC / DomainsByProxy.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 16, 2025, 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 January 21, 2025.

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 January 23, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 12, 2025. The Respondent sent email communications to the
Center on January 31, and February 4, 2025. The Center notified the Commencement of Panel Appointment
Process on February 14, 2025.

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The Center appointed Gary Saposnik as the sole panelist in this matter on February 19, 2025. 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

Founded in 1986, with its principal office now in Sunnyvale, California, the Complainant is a United States corporation engaged in electronic design automation. It is a provider of solutions for designing and verifying advance silicon chips, and for designing next-generation processes and models required to manufacture those chips. The Complainant’s technology is at the heart of innovations that are changing the way people work and play, with breakthroughs ushering in the era of Smart Everything where devices are getting smarter and connected. The Complainant is at the forefront of advanced technologies for chip design, verification, IP integration, and software security and quality testing. The Complainant is a publicly-traded company, employing over 19,000 employees, and in 2024 it reported over USD 6.1 billion in revenue.

The Complainant is the owner of a number of trademark registrations for SYNOPSYS throughout the world, including the following:

- SYNOPSYS, United States Registration No. 1601521, registered June 12, 1990, in class 42;

- SYNOPSYS, United States Registration No. 1618482, registered October 23, 1990, in class 9;

- SYNOPSYS, European Union Registration No. 000181172, registered February 1, 1999, in classes 9,

16 and 42.

The Complainant also owns the domain name <synopsys.com>, as well as SYNOPSYS domain names at a number of generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) including .biz, .org, .global, .ac, .at, .ca, .co, .dk, .fr, .jp, .kz, and .asia.

The Respondent appears to be an individual located in the United States. The disputed domain name stating, “Get This Domain”.
<synopsys-us.com> was registered by the Respondent on November 26, 2024. It resolves to a landing page
which states, “Launching soon” and which invites Internet users to sign up for updates by entering their email
address. To the Complainant’s knowledge, this web page is a placeholder web page provided by the
Registrar. Subsequent to the Complainant’s Amended Complaint after the Registrar revealed the

The Complainant notes that Mail Exchange (“MX”) records have been configured for the disputed domain name.

The Complainant’s authorized representatives submitted a notice to the Respondent via the Registrar’s contact form, stating that the disputed domain name or content is infringing on a trademark or violating local laws or regulations. No response was received from the Respondent to this notice.

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.

The Complainant asserts that the disputed domain name is identical or confusingly similar to its SYNOPSYS trademark. The disputed domain name comprises the Complainant’s SYNOPSYS trademark in its entirety as its leading element, followed by a hyphen and the letters “us”, ostensibly as a reference to the United

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States, along with the gTLD “.com”. The Complainant submits that the addition of a hyphen and the letters
“us” to the Complainant’s trademark in the disputed domain name does not prevent a finding of confusing
similarity. Synopsys, Inc. v. Andrew Tuinstra, WIPO Case No. D2024-0616.

The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, namely that (i) before notice of the dispute, the Respondent has not used, or made 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) the Respondent has not been commonly known by the disputed domain name; or (iii) the Respondent is not 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 trademark or service mark at issue.

The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The Respondent has not received any license or other authorization of any kind to make use of the Complainant’s SYNOPSYS mark in a domain name or otherwise. Before notice of the dispute, the

Respondent has not used or made demonstrable preparations to use the disputed domain name. Prior
UDRP panels have held that the resolving of the domain name to a “launching soon” page does not amount
to a bona fide offering of goods or services. Amadeus IT Group, S.A. v. Registration Private Domains by
Proxy LLC/Johs Swalheim, WIPO Case No. D2021-3135.

The Respondent is not commonly known by the disputed domain name. The Respondent initially used a proxy service when they registered the disputed domain name. Upon the registrar revealing the contact details, the Respondent’s name bears no resemblance to the disputed domain name, nor is there any

evidence that the Respondent has acquired or applied for any trademark registrations for “SYNOPSYS” or
any variation thereof, as reflected in the disputed domain name.

The Respondent has not provided any evidence that it is making any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Respondent’s use of the disputed domain name to resolve to a landing page is analogous to passive holding and does not give rise to a legitimate

noncommercial or fair use. Furthermore, UDRP panels have held that a domain name consisting of a
trademark plus an additional term cannot constitute fair use if it effectively impersonates or suggests
sponsorship or endorsement by the trademark owner. WIPO Overview of WIPO Panel Views on Selected
UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 2.5.1. The addition of
“-us” to the SYNOPSYS trademark may be read as a reference to the United States, where the Complainant
and the Respondent are based, and as such, the disputed domain name carries a risk of implied affiliation
with the Complainant.

Lastly, the Complainant avers that the Respondent registered and is using the disputed domain name in bad faith. The Complainant’s SYNOPSYS trademark is well known and has acquired considerable goodwill and renown throughout the world, has been used by the Complainant in connection with its goods and services since 1988. Synopsys, Inc. v. Office Rolls, WIPO Case No. D2022-2642. In addition to the Respondent’s failure to reply to the Complainant’s pre-Complaint notice as an inference of bad faith (WIPO Overview 3.0,

section 3.6), the Respondent has no relationship with the Complainant or authorization to make use of its
trademark in a domain name or otherwise. The registration of the disputed domain name was done
opportunistically by the Respondent, thereby carrying with it a risk of implied affiliation with the Complainant,

in bad faith.

The use of the disputed domain name to resolve to a landing page stating that the website would be
“Launching soon” is analogous to passive holding and would not prevent a find of bad faith use. WIPO
Overview 3.0, section 3.3; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-

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B. Respondent

The Respondent replied to the Amended Complaint via an email to the Complainant, as well as to the Center, stating “I’d like to propose we settle – either I will cancel the domain name registration or transfer the domain. Is one of these remedies preferred?”. No other reply to the Complainant’s contentions was submitted.

6. Discussion and Findings

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 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.

The Panel finds the SYNOPSYS mark is recognizable within the disputed domain name. The inclusion of
the hyphen and of the term “us” in the disputed domain name do not prevent such a finding. Accordingly, the
disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0,
section 1.7. Synopsys, Inc. v. Synopsys Ltd, Synopsys, WIPO Case No. D2024-5057.

Although the addition of other terms here, “-us” 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 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.

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 not rebutted the 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. Although the Respondent sent informal communications to the Center, they did not address or dispute any of the claims made by the Complainant and merely agreed to a transfer or cancellation of the disputed domain name.

The Panel finds that the composition of the disputed domain name carries a risk of implied affiliation, which cannot give rise to rights or legitimate interests. WIPO Overview 3.0, section 2.5.1.

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The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

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 a domain name in bad faith.

In the present case, the Panel notes that the Respondent registered the disputed domain name many years after the Complainant acquired rights in its well-known SYNOPSYS mark, including in the United States, the main location of the Complainant and the Respondent. The inclusion of a hyphen along with “us”, which can be perceived as “United States”, gives rise to an increase in the likelihood of Internet users perceiving an

association of the resolving website as being related to the Complainant.

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.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Synopsys, Inc. v. Andrew Tuinstra, WIPO Case No. D2024-0616. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under 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 <synopsys-us.com> be transferred to the Complainant.

/Gary Saposnik/
Gary Saposnik
Sole Panelist
Date: March 5, 2025