Cirrus Logic, Inc. v. TAMS CAI / CAI JIANPING
Claim Number: FA2011001920269
Complainant is Cirrus Logic, Inc. (“Complainant”), represented by Jason Paul Blair of Fleckman & McGlynn, PLLC, United States of America (“United States”). Respondent is TAMS CAI / CAI JIANPING (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cirrus-ic.com> (the “disputed domain name”), registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2020; the Forum received payment on November 11, 2020.
On November 12, 2020, the Registrar confirmed by e-mail to the Forum that the <cirrus-ic.com> disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., 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 November 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2020 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@cirrus-ic.com. Also on November 16, 2020, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is in the business of making integrated circuits, semiconductors, signal processors, and audio processing equipment. Complainant has rights in the CIRRUS trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,112,161, registered November 11, 1997), among others (hereinafter referred to collectively as the “CIRRUS Mark”).
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s CIRRUS trademark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith since, among other things, Respondent is using the disputed domain name to sell counterfeit goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant owns trademark rights in the CIRRUS Mark, that the disputed domain name is confusingly similar to the CIRRUS Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the CIRRUS Mark through Complainant’s registration of the trademark with the USPTO (e.g., Reg. No. 2,112,161, registered November 11, 1997). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Moreover, the Panel concludes that the disputed domain name is identical or confusingly similar to Complainant’s CIRRUS Mark as it contains the CIRRUS Mark in its entirety connected by a hyphen to the abbreviation “ic“, presumably an abbreviation for “integrated circuits”, followed by the generic Top-Level Domain (“gTLD”) “.com”. Many panels have found that adding an abbreviation to a registered trademark renders the domain name confusingly similar to a complainant’s mark. See, e.g., Nordstrom, Inc. and NIHC, Inc. v. Steven Grotte, Case No. FA0207000115347 (Forum Aug. 26, 2002) (transferring the <nordstrominc.com> and <nordstromsinc.com> domain names to the complainant. In addition, the use of a gTLD is technically required and thus, fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it 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 that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests 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.”). Here, the Panel holds that Complainant has made out a prima facie case.
Further, Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CIRRUS Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
First, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Bad faith under Policy ¶ 4(b)(iv) is found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent., LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent attempts to pass off as Complainant to deceive Internet users as to the affiliation or association of the Complainant. Such use is indicative of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Here, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent uses the disputed domain name to resolve to a website that sells counterfeit goods, purportedly those of the Complainant. Using a confusingly similar domain name to divert Internet users to a website that sells counterfeit goods is emblematic of bad faith. In this case, the disputed domain name resolves to a website that prominently displays counterfeit integrated circuits and signal processor products that infringe the products and services offered by Complainant under the CIRRUS Mark, demonstrating bad faith.
Finally, the Panel also concludes that Respondent registered the disputed domain name in bad faith since Respondent had actual knowledge of Complainant’s rights in the CIRRUS Mark prior to registration of the disputed domain name. Here, the Panel agrees with Complainant that the CIRRUS Mark is well known in the field of integrated circuits and audio and signal processing. Additionally, because Respondent holds itself out on the resolving website as a company that “is a provider of high performance, low-power ICs for audio and voice signal processing applications,” Respondent cannot credibly claim to have been unaware of the CIRRUS Mark before registering the disputed domain name. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cirrus-ic.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: December 27, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page