Synopsys, Inc. v Synopsys Ltd, Synopsys

WIPO Case No. D2024-5057

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Synopsys, Inc. v. Synopsys Ltd, Synopsys

Case No. D2024-5057

1. The Parties

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

(Paris) LLP, France.

Respondent is Synopsys Ltd, Synopsys, United States.

2. The Domain Name and Registrar

The disputed domain name <synopsys-ind.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2024. On December 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 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 (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on December 10, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 12, 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 Respondent of the Complaint, and the proceedings commenced on December 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 8, 2025.

page 2

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on January 16, 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 registered office in Sunnyvale, California, Complainant Synopsys, Inc. is engaged in electronic design automation. It is the world's leading provider of solutions for designing and verifying silicon chips and for designing the next-generation processes and models required to make those chips.

Complainant’s technology is at the heart of innovations that are changing the way people work and play and whose breakthroughs are ushering in the era of Smart Everything. Complainant has over 19,000 employees and, in 2023, earned over USD 5.8 billion.

Complainant owns a number of trademark registrations throughout the world for the SYNOPSYS mark. the domain name <synopsys.com>.

These registrations include United States Trademark Registration No. 1601521, which issued on June 12,
1990; Canadian Trademark Registration No. TMA458822, which issued on June 7, 1996; and European

The disputed domain name <synopsys-ind.com> was registered in October 2024, and has been used by Respondent in connection with a fraudulent employment phishing scheme whereby members of the public are approached with fictitious job offers. More specifically, the disputed domain name was used to create the email address “[…]@synopsys-ind.com”, which was, in turn, used to send emails impersonating Complainant, reaching out to potential candidates purporting to offer an interview for a fictitious data analyst position. Pursuant to Complainant’s request to the Registrar to suspend the disputed domain name, the disputed domain name has been placed in “clientHold” status and now resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for transfer of the disputed domain name.

Complainant asserts that the disputed domain name is identical or confusingly similar to its SYNOPSYS trademark. It points out that the disputed domain name comprises the SYNOPSYS mark in its entirety. Complainant submits that the addition of the hyphen and the letters “ind” in the disputed domain name does

not preclude a finding of confusing similarity since the SYNOPSYS mark remains clearly recognizable in the
disputed domain name.

Complainant next asserts that Respondent has no rights or legitimate interests in the disputed domain name. It indicates that Respondent is not a licensee of Complainant and is not affiliated with Complainant in any way. Pointing out that the disputed domain name is, or was, being used as part of a fraudulent employment phishing scheme, Complainant maintains that Respondent is not using the disputed domain name in connection with any genuine business offering.

Further, Complainant alleges, there is no evidence that Respondent is commonly known by the disputed domain name or that Respondent owns or has applied for any trademark registrations for SYNOPSYS or any variation thereof.

page 3

Finally, Complainant asserts that “Respondent’s use of the Domain Name to create a misleading impression of association with the Complainant in the furtherance of a fraudulent online scheme does not constitute legitimate noncommercial or fair use of the Domain Name”.

With respect to the issue of “bad faith” registration and use, Complainant maintains that its SYNOPSYS mark is well known throughout the world, having been in use since 1988. “Given this, the Complainant submits that the Respondent could not credibly argue that it did not have prior knowledge of the Complainant’s trademarks at the time of registration of the Domain Name in October 2024, over 30 years after the Complainant’s first registration of its SYNOPSYS trademark.” Complainant further contends that the use of the disputed domain name for illegitimate activity, such as phishing, “is manifestly considered evidence of bad faith”. Respondent’s employment phishing scheme is aimed at misleading Internet users into disclosing personal identifying information as well as financial information, Complainant declares.

B. Respondent

Respondent did not reply to Complainant’s contentions.

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
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.

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 nondistinctive term “ind” 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.

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 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 Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating

page 4

rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or
otherwise.

Panels have held that the use of a domain name to engage in illegitimate or illegal activity, such as the employment phishing scheme engaged in by Respondent, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

C. Registered and Used in Bad Faith

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 held that the use of a domain name for illegal activity, such as the employment phishing
scheme outlined above, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record,
the Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith under

the Policy.

In finding the requisite bad faith registration and use, the Panel also relies on Complainant’s longstanding
use of its SYNOPSYS mark, which long predates registration of the disputed domain name, and notes that
Respondent apparently resides in the same city, Sunnyvale, California, in which, as noted above,

Complainant is registered.

The Panel finds that Complainant has established the third element of 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-ind.com> be transferred to Complainant.

/Jeffrey M. Samuels/
Jeffrey M. Samuels
Sole Panelist
Date: January 30, 2025