Synopsys, Inc. v Jesus Duarte

WIPO Case No. D2023-1874

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Synopsys, Inc. v. Jesus Duarte

Case No. D2023-1874

1. The Parties

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

Lovells (Paris) LLP, France.

The Respondent is Jesus Duarte, United States.

2. The Domain Name and Registrar

The disputed domain name <synoppsys.com> (the “Disputed Domain Name”) is registered with Realtime

Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2023. On April 27, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2023, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 28, 2023 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 May 4, 2023.

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 May 4, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2023.

The Center appointed Carol Anne Been as the sole panelist in this matter on June 12, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

a. The following facts are asserted by the Complainant in the Complaint and are not disputed.

The Complainant

The Complainant is Synopsys, Inc., a publicly traded technology company with its principal place of business in Mountainview, California, United States of America.

The Complainant owns United States federal trademark registrations for SYNOPSYS, Registration Numbers 1,618,482 and 1,601,521 in Classes 9 and 42 for “computer programs and program manuals, all sold as a unit, for use in electronic circuitry applications” and “integrated circuit design services” with registration dates of October 23, 1990 and June 12, 1990, respectively.

In addition to its registered trademark, the Complainant operates a customer-facing website which uses the domain name <synopsys.com>, and was initially registered on June 27, 1989. The Complainant also owns a variety of other Top-Level Domains including but not limited to <synopsys.org>, <synopsys.biz> and <synopsys.global>.

The Respondent

The Respondent is Jesus Duarte of Los Angeles, California, United States.

The Disputed Domain Name was registered on August 30, 2022. As of June 2023, the Disputed Domain

Name does not resolve to an active website.

b. No facts have been asserted by the Respondent since the Respondent did not submit a Response in this

proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is practically identical with and confusingly similar to the Complainant’s trademarks, company name, and domain names. The Complainant states that it was founded in 1986 and claims to be the world’s leading provider of solutions for designing and verifying advanced silicon computer chips. The Complainant supports its statement that it is globally renowned by providing its corporate overview, press releases, and its social media pages (including its LinkedIn page with over 475,000 followers). The Complainant contends that the minor alteration to its mark in the Disputed Domain Name, adding an additional “p”, does not dispel the confusing similarity to the Complainant’s mark.

The Complainant contends the Respondent has not demonstrated any rights or legitimate interests in the known by the Disputed Domain Name or that the Respondent has acquired or applied for any trademark registrations related to the Disputed Domain Name, and that the Respondent has not used the Disputed Domain Name with any bona fide offering of goods or services.

The Complainant alleges that the Respondent has registered and is using the Disputed Domain Name in bad
faith. The Complainant notes that the Respondent registered the Disputed Domain Name long after the
Complainant was founded and over 30 years after the Complainant registered its SYNOPSYS trademark in

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1990. Additionally, the Complainant alleges that the Respondent used the Disputed Domain Name to
impersonate two of the Complainant’s employees and send phishing emails to the Complainant’s users

requesting payment of invoices.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it holds rights in its mark SYNOPSYS and uses its mark for
“integrated circuit design services” and “computer programs and program manuals, all sold as a unit, for use
in electronic circuitry applications.” The Complainant owns registrations for its SYNOPSYS mark in several
jurisdictions around the world, including the United States. The Disputed Domain Name is nearly identical to
the Complainant’s mark, only adding a second “p.” Minor, single-letter alterations do not prevent a finding of
confusing similarity between the Disputed Domain Name and the Complainant’s mark. WIPO Overview of
WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9 (“A
domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered
by panels to be confusingly similar to the relevant mark for purposes of the first element.”). See also
Wikimedia Foundation, Inc. v. Privacy Protect, Privacy Protection / Email Marketing Systems Inc., WIPO

Case No. D2015-1810

Therefore, the Disputed Domain Name is confusingly similar to the Complainant’s SYNOPSYS mark.

B. Rights or Legitimate Interests

The Respondent has not set forth any evidence of circumstances of the type described in paragraph 4(c) of the Policy to demonstrate rights to or any legitimate interests in the Disputed Domain Name. The Complainant’s assertion that the Respondent has no rights or legitimate interests in the Disputed Domain Name is unopposed. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. See also Motorola Trademark Holdings, LLC v. PeaceSearch.com, Ltd. WIPO Case No. D2011-2033 (“In view of Respondent’s failure to submit a response . . . [t]he Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory”).

The Respondent has shown no evidence of any rights or legitimate interests in the Disputed Domain Name. Further, the Respondent’s use of the Disputed Domain Name to send a “phishing” email impersonating two employees of the Complainant seriously undermines any claim to rights or legitimate interests that the

Respondent could potentially make. WIPO Overview 3.0, section 2.13 (“Panels have categorically held that the use of a domain name for illegal activity . . . can never confer rights or legitimate interests on a respondent.”)

Therefore, the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

WIPO Overview 3.0, section 3.1.4 (“the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is

The Disputed Domain Name was registered more than 30 years after the Complainant registered its the Disputed Domain Name to send “phishing” emails is clear evidence of use in bad faith.

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manifestly considered evidence of bad faith”). See also, Shepherd and Wedderburn LLP v. Tony Warburton,
WIPO Case No. D2018-1130 (“Phishing per se is bad faith registration and use under the Policy.”)

The phishing email also indicates that the Respondent likely registered the Disputed Domain Name because of its similarity to the Complainant’s established trademark rights and existing domain name, further demonstrating bad faith. When the Disputed Domain Name was registered in 2022, the Respondent had constructive knowledge of the Complainant’s trademark registration under United States trademark law. WIPO Overview 3.0, section 3.2.2 (“In limited circumstances – notably where the parties are both located in the United States and the complainant has obtained a federal trademark registration pre-dating the relevant domain name registration – panels have been prepared to apply the concept of constructive notice.”) Impersonation of the Complainant’s employees in the phishing email using the Disputed Domain Name is further evidence that the Disputed Domain Name was registered to target the Complainant’s mark, indicating bad faith. See FLRish IP, LLC v. prince zvomuya, WIPO Case No. D2019-0868 (“There is no right or legitimate interest in holding a domain name to further fraudulent impersonation, and registration and use of a domain name for such a purposes involves registration and use in bad faith.”)

Therefore, the Respondent registered and is using the Disputed Domain Name in bad faith.

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 <synoppsys.com> be transferred to the Complainant.

/Carol Anne Been/
Carol Anne Been
Sole Panelist
Date: June 26, 2023