Synopsys, Inc. v Kelsey Salman

WIPO Case No. D2024-0789

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Synopsys, Inc. v. Kelsey Salman

Case No. D2024-0789

1. The Parties

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

Lovells (Paris) LLP, France.

The Respondent is Kelsey Salman, United States.

2. The Domain Name and Registrar

The disputed domain name <synopsys.app> (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 February 21, 2024. On February 21, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 21, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 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 February 27, 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 paragraph 5, the due date for Response was March 20, 2024. The Respondent did not submit a formal response. However, informal email communications were received by the Respondent from the Center on February 22, 2024, and February 23, 2024, indicating a willingness to explore settlement options. Since the

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Complainant did not wish to explore the settlement options, the Center notified Commencement of Panel
Appointment Process on March 21, 2024.

The Center appointed Lynda M. Braun as the sole panelist in this matter on March 26, 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

Founded in 1986, the Complainant is a United States corporation engaged in electronic design automation. The Complainant is a leading provider of solutions for designing and verifying advance silicon chips, and for designing the next-generation processes and models required to manufacture those chips. Today, the

Complainant is a publicly-traded company employing over 19,000 employees. In 2023, the Complainant reported over USD 5.8 billion in revenue.

The Complainant is the owner of the following trademarks registered with the United States Patent and
Trademark Office (“USPTO”): SYNOPSYS, United States Trademark Registration No. 1,601,521, registered
on June 12, 1990, in international class 42; and SYNOPSYS, United States Trademark Registration No.
1,618,482, registered on October 23, 1990, in international class 9. The Complainant also owns registered
trademarks in multiple jurisdictions worldwide for its silicon chips (hereinafter collectively referred to as the
“SYNOPSYS Mark”).

The Complainant is the owner of numerous domain names consisting of or including its SYNOPSYS Mark, registered under various generic Top-Level Domains (“gTLDs”), including <synopsys.com>, from which it operates its main consumer-facing website, as well as under a number of country code Top-Level Domains (“ccTLDs”).

The Disputed Domain Name was registered on April 22, 2022, and resolves to a pay-per-click (“PPC”) advertising page with links to third-party sponsored websites related to various third-party goods and services. In November 2023, the subdomain <pay.synopsys.app> resolved to a payment page provided by the Registrar. 1 On November 17, 2023, the Complainant’s lawyers, in an attempt to resolve the matter amicably, attempted to contact the Respondent by submitting a notice via the Registrar’s registrant contact form, but no response was received.

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 the Complainant’s SYNOPSYS Mark as it

includes the SYNOPSYS Mark in its entirety, followed by the gTLD “app”;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because

the Disputed Domain Name resolves to a landing page that contains PPC third-party sponsored hyperlinks,
the Complainant has not authorized the Respondent to register a domain name containing the

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SYNOPSYS Mark, the Respondent was not making a bona fide offering of goods or services through the any similar name; and

- the Disputed Domain Name was registered and is being used in bad faith since, among other things, the Disputed Domain Name resolved to a PPC landing page where the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the

Complainant’s SYNOPSYS Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed
Domain Name.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, informal email communications were received from the Respondent on February 22, 2024 and February 23, 2024, stating in part, “I have no problem transferring the domain to this entity” and “I will just cancel my ownership of the domain immediately”. As claimed by the Complainant, while the Respondent was previously given the opportunity to settle following the Complainant’s use of the Registrar’s contact form for the Respondent, it did not respond to the request to do so, and thus the Complainant has requested the proceeding continue with the Panel’s appointment and rendering of a Decision on the substantive merits of the Complaint.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii)      the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the SYNOPSYS Mark.

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.

It is uncontroverted that the Complainant has established rights in the SYNOPSYS Mark based on its years of use as well as its registered trademarks for the SYNOPSYS Mark before the USPTO and other jurisdictions worldwide. The registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. As stated in section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. Thus, the Panel finds that the Complainant satisfied the threshold requirement of having trademark rights in the SYNOPSYS Mark.

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The Disputed Domain Name consists of the SYNOPSYS Mark in its entirety followed by the gTLD “.app”.
Accordingly, the Disputed Domain Name is identical to the SYNOPSYS Mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Moreover, the Disputed Domain Name is followed by the gTLD “.app”. The addition of a gTLD such as “.app” in a domain name is a technical requirement. Thus, it is well established that such element may typically be disregarded when assessing whether a disputed domain name is identical or confusingly similar

Proactiva Medio Ambiente, S.A. v. ProactivaD2012-0182

to a trademark. See , WIPO Case No. and confusingly similar to the Complainant’s SYNOPSYS Mark.

Based on the available record, the Panel finds that 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. Here, the Respondent has not so demonstrated.

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.

The Complainant’s prima facie case includes the fact that the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its SYNOPSYS Mark, that the Complainant does not have any type of business relationship with the Respondent, that there is no evidence that the Respondent is

commonly known by the Disputed Domain Name or by any similar name, and that there is no evidence that
the Respondent was using or making demonstrable preparations to use the Disputed Domain Name in
connection with a bona fide offering of goods or services. See Policy, paragraph 4(c).

Further, as noted above, the Disputed Domain Name resolves to a parking page displaying PPC links to various third-party goods and services. The Complainant infers that the Respondent is seeking to generate click-through revenue from Internet users drawn to the Respondent’s web page due to a perceived association between the Disputed Domain Name and the Complainant’s mark. Such conduct, where the Respondent is seeking to unfairly capitalize on the goodwill associated with the Complainant’s trademark, does not amount to use of the Disputed Domain Name in connection with a bona fide offering of goods or services. As such, the Respondent’s registration and use of the Disputed Domain Name may be deemed commercially motivated and does not amount to a legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.

Finally, also as noted above, the subdomain <pay.synopsys.app> previously resolved to a payment page. The Complainant notes that Internet users seeking the Complainant’s official website may have mistakenly come across the web page to which the subdomain <pay.synopsys.app> resolved and may in turn have

disclosed confidential payment information. In the absence of any evidence that the Disputed Domain Name

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is being used for legitimate purposes, the Panel submits that such use of the Disputed Domain Name does not constitute a bona fide offering of goods or services. See SODEXO v. Dominique Allen, WIPO Case No. D2023-3654. In fact, such use of a disputed domain name for illegal activity or fraud can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.1.

Based on the available record, the Panel finds that 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.

The Disputed Domain Name resolves to a parking page displaying PPC links to third-party goods and services and the Complainant infers that the Respondent derives click-through revenue from the presence of such links on the website to which the Disputed Domain Name resolves. The Panel finds that by using the Disputed Domain Name in such a manner, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s SYNOPSYS Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

Further, the Panel submits that the previously resolved subdomain was used in connection with a fraudulent scheme, constituting bad faith under the Policy.

Moreover, the Panel concludes that the Respondent’s registration of the Disputed Domain Name was an authorized by or affiliated with the Complainant.
attempt to disrupt the Complainant’s business by diverting Internet users who were searching for the
Complainant’s goods from its official website to the Respondent’s website. See Banco Bradesco S.A. v.
Fernando Camacho Bohm, WIPO Case No. D2010-1552. The Respondent’s use of the Disputed Domain

Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (“a finding of bad faith may be made where the respondent ‘knew or should have known’ of the registration and/or use of the trademark prior to registering the domain name”). Thus, the Panel concludes that in the present case, the Respondent had the Complainant’s SYNOPSYS Mark in mind when registering the Disputed Domain Name.

Finally, the Panel also finds that the Respondent knew that the Complainant had rights in the SYNOPSYS known of the Complainant or its SYNOPSYS Mark when registering the Disputed Domain Name. See
Mark when registering the Disputed Domain Name, emblematic of bad faith registration and use. The

Respondent created an identical domain name, making clear that the Respondent was well aware of the

Based on the available record, the Panel finds that the third element of the Policy has been established.

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.app> be transferred to the Complainant.

/Lynda M. Braun/
Lynda M. Braun
Sole Panelist
Date: April 5, 2024
1As of the writing of the Decision, the subdomain no longer resolves to a payment page, but resolves to a landing page that states,
“Account is Closed. This merchant payment account is inactive and cannot process payments. Please contact the merchant for further
assistance.”