Silicon Laboratories Inc. v. Arun Chinnaraju
Claim Number: FA1010001352389
Complainant is Silicon Laboratories Inc. (“Complainant”), represented by Alison Davis Frey, Texas, USA. Respondent is Arun Chinnaraju (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2010; the National Arbitration Forum received payment on October 18, 2010.
On October 19, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 October 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2010 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@thesiliconlab.com, postmaster@thesiliconlabs.com, postmaster@mysiliconlab.com, and postmaster@mysiliconlabs.com. Also on October 20, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from the Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com> domain names are confusingly similar to Complainant’s SILICON LABS mark.
2. Respondent does not have any rights or legitimate interests in the <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com> domain names.
3. Respondent registered and used the <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Silicon Laboratories Inc., has a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its SILICON LABS mark (e.g., Reg. No. 2,301,024 issued December 14, 1999) in connection with integrated circuits and computer hardware.
Respondent, Arun Chinnaraju, registered the disputed domain names on July 15, 2010. The disputed domain names resolve to websites displaying links to advertisements and websites that purport to be associated with Complainant or third-parties in the semiconductor industry.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the 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 domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in its SILICON LABS mark based on its registration of the mark with the USPTO (e.g., Reg. No. 2,301,024 issued December 14, 1999). The Panel finds that Complainant’s registration of the mark with the USPTO is sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant alleges that Respondent’s <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com> domain names are confusingly similar to Complainant’s SILICON LABS mark. Respondent’s <thesiliconlabs.com> and <mysiliconlabs.com> domain names incorporate the entirety of Complainant’s SILICON LABS mark and add the same generic terms “the” and “my,” and eliminate the space between the terms of Complainant’s mark. The Panel finds that these minor changes do not remove Respondent’s disputed domain names from the realm of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Respondent’s <thesiliconlab.com> and <mysiliconlab.com> domain names delete the space between the terms in Complainant’s mark, add a generic term such as “the” or “my,” and delete the letter “s” from Complainant’s mark. The Panel finds that these alterations are not sufficient to distinguish the disputed domain names from Complainant’s mark. See Bond & Co. Jewelers, supra; see also NIIT Ltd., supra; see also Am. Express Co., supra; see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET). Additionally, all of Respondent’s disputed domain names contain the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of “.com” does not serve to adequately distinguish Respondent’s disputed domain names. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, pursuant to Policy ¶ 4(a)(i), Respondent’s <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com> domain names are confusingly similar to Complainant’s SILICON LABS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com> domain names. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case in support of its allegations. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information lists the registrant of the disputed domain names as “Arun Chinnaraju,” which the Panel finds is not similar to any of the disputed domain names. There does not appear to be any other evidence in the record indicating that Respondent is commonly known by the disputed domain names. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent’s <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com> domain names resolve to websites featuring advertisements and links to Complainant’s competitors in the electronics and computer hardware industry. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to advertise and promote products that directly compete with those manufactured and produced by Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of the disputed domain names to divert Internet users searching for information on Complainant’s products and services to Respondent’s website featuring links to Complainant’s competitors constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent presumably receives a fee when Internet users visit the websites resolving from the <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com> domain names and click on the various links displayed. Therefore, Complainant argues, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the SILICON LABS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or displayed links. The Panel agrees and finds this to be a demonstration of Respondent’s registration and use in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <thesiliconlab.com>, <thesiliconlabs.com>, <mysiliconlab.com>, and <mysiliconlabs.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 24, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page