Silicon Laboratories Inc. v. SiconTech / SiCon Design Technologies
Claim Number: FA1206001448144
Complainant is Silicon Laboratories Inc. (“Complainant”), represented by Alison Davis Frey, Texas, USA. Respondent is SiconTech / SiCon Design Technologies (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <silabtech.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil -Jiménez as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2012; the National Arbitration Forum received payment on June 11, 2012.
On June 11, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <silabtech.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2012 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@silabtech.com. Also on June 12, 2012, 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.
A timely Response was received and determined to be complete on July 2, 2012.
Complainant provided a timely Additional Submission and corresponding Annexes on July 5, 2012.
On July 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luz Helena Villamil-Jiménez 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
1. Complainant was founded in 1996 and has now operations, sales, and design activities worldwide. It is an industry leader in mixed-signal integrated circuits, and its products have applications in many fields including the consumer, communications, computing, industrial and automotive industries.
2. Complainant has rights in the SILABS mark which it uses in connection with mixed-signal integrated circuits, and it is the owner of Registration No. 3,298,916 for the trademark SILABS, registered with the United States Patent and Trademark Office (“USPTO”) on September 25, 2007.
3. Complainant has extensively advertised its goods and services under the mark SILICON LABS and variations thereof (such as SILICON LABORATORIES and SILABS) and has expended considerable effort and expense in offering quality goods and services under these marks.
4. The <silabtech.com> domain name is confusingly similar to the SILABS mark. The domain name <silabtech.com> consists of the mark SILABS, with the omission of the letter “S”, plus the generic word “TECH,” and the generic top-level domain (“gTLD”) .com. The addition of both a descriptive term relating to Complainant’s business and a gTLD to an otherwise identical mark fail to sufficiently distinguish the domain name from the mark, and SILAB is still the dominant portion of the domain name making it substantially similar to Complainant’s distinctive mark SILABS.
5. Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent only has a “coming soon” page on the Internet.
6. Respondent is not commonly known by the <silabtech.com> domain name, and Complainant did not authorize or license Respondent’s use of its mark in a domain name.
7. Respondent registered the domain name in bad faith. Complainant contends that Respondent’s <silabtech.com> domain name will be disruptive to Complainant’s business when it is no longer inactive, and the <silabtech.com> domain name will eventually be used to market goods and services that compete with Complainant’s business based on the message displayed on the <silabtech.com> domain name’s “coming soon” page referencing mixed-signal IPs. In its Additional Submission, Complainant notes that both Complainant and Respondent operate in the Mixed Signal Semiconductor industry and are therefore competitors for the purpose of the current UDRP dispute.
B. Respondent
Respondent makes the following contentions:
1. Respondent is a solution provider of leading edge ASIC Designs, and provides a wide range of concept to Silicon services from design specification, logic design/verification, DFT, physical design, and analog. Respondent assists clients in developing their next generation products (mobile devices, data communication, consumer products, and defense areas, etc.).
2. The name SILABS is a derivative of the common industry word ‘SILICON’ referring to the metal used in making the semiconductor and a common abbreviation for ‘LABORATORIES’, and therefore Complainant cannot claim a protectable trademark on a generic industry term.
3. The domain <silabtech.com> was registered as a part of a business plan to develop its Mixed Signal IP business.
4. While Complainant is in the business of Mixed Signal IC’S, Respondent is involved in developing Mixed Signal IP’S. Respondent does not produce IC’s, so it is not in direct competition with Complainant.
5. Respondent has made no attempt to represent in any away that it is a company related to Complainant’s business.
6. Complainant claims that ‘Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, but this is in contradiction with Claimant’s statement that ‘the content at the site is evidence that Respondent is clearly preparing the website for commercial activity of some sort.’
7. The semiconductor is a high tech industry and unlike a consumer, the target businesses are very aware of who is who in the industry and are not easy mislead or confused.
8. Sicon Design Technologies PVT LTD is a company established in Bangalore, India in August 2010 and has been offering ASIC Design, ASIC Verification, ASIC Physical Design, ASIC DFT, ASIC Analog Design and FPGA Implementation services. SiconTech INC, was established in December 2011 in Austin to start its operations in the USA using its existing goodwill that has gained with its Sicon Design services out of India. Respondent is now expanding its services to include its IP business and this is solely on the basis of its own Sicon name. Respondent has never presented a connection to Complainant and it does not intend to do so in the future as it might be detrimental to its own business.
C. Additional Submissions
A. Complainant
Complainant makes the following additional submissions:
1. Respondent argues that Complainant does not have exclusive rights in the mark “SILABS” because the word is “a derivative of the common industry word ‘SILICON’ referring to the metal used in making the semiconductor and a common abbreviation for ‘LABORATORIES’.” Complainant states that while it is true that the trademark SILABS does contain portions of the words “silicon” and “laboratories,” this does not negate the distinctiveness of the mark SILABS itself.
2. Respondent fails to establish any rights or legitimate interest via its remarks and exhibits. Respondent has not established that it (1) has or does use the domain name in connection with a bona fide offering of goods or services, (2) is commonly known by the domain name, or (3) is making a legitimate non-commercial or fair use of the domain name.
3. The reasoning Respondent provides to explain that the usage of SilabTech is legitimate is both flawed and contradicted by additional statements made by it. Respondent tries to argue that SILAB is an acronym for “Silicon and Beyond” but this phrase has apparently no relation to Respondent, who provides no evidence that it has any trademark applications or registrations or any domain name registrations for SILICON AND BEYOND or variations or formatives thereof, nor does it provide any evidence that it is the name of an entity operated by or are affiliated with Respondent. Complainant asserts that if this is a phrase of interest to Respondent, it should have registered <siliconandbeyond.com>.
4. Complainant believes the term Silabtech was invented as a letter string for a URL in order to create the impression of an affiliation or connection with Complainant in the minds of consumers.
5. Complainant readily admits that Respondent is preparing the website for commercial activity of some sort. However, this cannot be considered a bona fide offering of goods and services when the activity is obviously in competition with that of Complainant, is likely to constitute an infringing use of Complainant’s trademark, and is of a type generally accepted as evidence of bad faith intent.
6. Respondent does not deny knowledge of Complainant or its marks. Rather, it confirms that it has established a business in Complainant’s hometown of Austin, Texas. There is no question Respondent has a consistent presence in the United States, including in Complainant’s own backyard.
7. The two parties are in the same industry and provide highly related, if not identical, products and services. The fact that Respondent’s business model is not exactly the same as Complainant’s and Respondent is a newer, unestablished company, does not obviate the possibility of consumer confusion.
B. Respondent
Respondent makes the following additional submissions:
1. Complainant uses the argument that ‘the exact abbreviation and combination of the elements is inherently distinctive and unique’ to establish the distinctiveness of their own mark, but fails to accord Respondent the same logic or privilege to establish the distinctiveness of their mark ‘silabtech’.
2. Respondent has already stated that the name ‘silabtech’ is derived from the phrase ‘SILICON AND BEYOND’ and the word ‘Technology’. Complainant breaks a single complete phrase ‘silabtech’, into ‘silab’ and ‘tech’ and then adds an ‘S’ to the broken part and then tries to build a case against Respondent. While Respondent’s name <silabtech.com> has some letters in common with ‘Silabs’, it sounds different, has a different meaning, it derives from a different phrase, and Respondent has made no attempt to show any affiliation with Complainant.
3. In response to Complainant’s argument that “Respondent provides no evidence that it has any trademark applications or registrations or any domain name registrations for SILICON AND BEYOND or variations or formatives thereof”, Respondent submitted evidence to demonstrate that it has legitimate business interest in “Silicon and Beyond” consisting in a printing of the WHOIS search results from GODaddy.com as evidence that <siliconandbeyond.com> is a registered domain name that lists ‘SiconTech’ as the Registrant and was registered at the same time as <silabtech.com>.
4. Respondent has a business plan which was submitted as evidence in the initial response. As part of the plan, Respondent is taking its time to execute its business plan one step at a time. As one of the steps, Respondent has designed and has executed the website <siliconandbeyond.com> and plans to enable <silabtech.com> as soon as possible.
5. Respondent cannot deny that it has knowledge of Complainant’s marks after the Complaint, but it denies any prior knowledge of Complainant’s marks before this Complaint was brought to their attention. Respondent has a legitimate business whether it is ‘Sicon Design’ or ‘SiconTech’ or ‘Silabtech’ and has the right to establish and operate their business anywhere in the world.
6. The consumers or corporations that avail Respondent’s services are extremely educated and highly knowledgeable and it would be a disservice to them to argue that they would give their business worth millions without doing their due diligence because of a little similarity in names. Respondent adds that apart from making light-weight statements that both operate in the same industry, Complainant has failed to provide any real evidence to establish bad faith, and operating in the same industry does not establish bad faith.
7. At the time of the Complaint, Complainant failed to establish intent of bad faith. The google results are very relevant as they establish that Respondent has made no attempt to divert traffic or show any affiliation with Complainant. Complainant does not establish any intent now, but forecasts and foretells with a great deal of certainty that Respondent’s intent will be of bad faith.
Complainant is the owner of the trademark SILABS, as it is evidenced by registration No. 3,298,916 with the USPTO dated September 25, 2007, submitted with the Complaint. The Panel therefore finds that with such registration Complainant has established rights in the mark SILABS under Policy ¶ 4(a)(i) regardless of the location of Respondent. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i). Also 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).”).
On the other hand, and still acknowledging the rights of Complainant over the trademark SILABS, the Panel must establish that an independent search on the internet disclosed several websites with domain names that contain or refer to the name SILAB as well, which thus appears to be commonly used. It is worth noting that the Internet disclosed the website <silab.fis.utfsm.cl> owned by a Chilean company named Silicone Laboratory, SiLab, a fact that supports Respondent’s arguments according to which the name SILABS is a derivative of the common industry word ‘SILICON’ referring to the metal used in making the semiconductor and a common abbreviation for ‘LABORATORIES’.
To demonstrate that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), Complainant contends that Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, and Respondent only has a “coming soon” page. In this concern, the Panel finds that this contention is indeed contradicted by Complainant’s statement according to which ‘the content at the site is evidence that Respondent is clearly preparing the website for commercial activity of some sort’, and also with the statement made to argue that the domain was registered in bad faith according to which ‘(T)he content appearing at <www.silabtech.com> indicates that Respondent will be offering competing products via the website at <www.silabtech.com>.’
In this respect, the Panel finds that the statements of Respondent according to which it has a business plan and is taking its time to execute it one step at a time, are consistent. A review of Respondent‘s website’s <siliconandbeyond.com> evidences that at present Respondent conducts business on the internet under the names SILABTECH | SILICON AND BEYOND, offering products related with the IP 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."
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.
The first requirement of the Policy in Paragraph 4(a)(i) for Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by Respondent.
In the present case, Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademark SILABS, registered at the USPTO under No.
3,298,916 on September 25, 2007, and of the trademarks SILICON LABS, SILICON LABS and Design, and SILICON LABORATORIES.
Notwithstanding the existence of a trademark registration owned by Complainant, the Panel is not convinced of the likelihood of confusion of the domain <silabtech.com> with the trademark SILABS since, as mentioned in the FINDINGS chapter above, there are several websites on the Internet that contain or refer to the word SILAB or even to the name Silicone Laboratories that are not related with Complainant. This being the case the Panel finds that Complainant does not have rights in the SILABS mark under Policy ¶ 4(a)(i). See B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat. Arb. Forum June 5, 2001) (holding that the complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for B2BWORKS).
Also as regards the assertion that Respondent has no rights or legitimate interests in respect of the domain name <silabtech.com>, the Claimant argued in its additional submission that the reasoning provided by Respondent to explain that the usage of SilabTech is legitimate is both flawed and contradicted because Respondent tried to argue that SILAB is an acronym for “Silicon and Beyond” but this phrase has apparently no relation with Respondent. The Panel finds that certainly this contention of Complainant was undoubtedly contested by Respondent who demonstrated with a printing of the WHOIS search results from GODaddy.com that <siliconandbeyond.com> is a registered domain name that lists ‘SiconTech’ as the Registrant and was registered at the same time as <silabtech.com>.
According to the foregoing, the Panel finds that Complainant did not make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
Complainant asserts that Respondent displays statements on its website that are clear references to goods and services such as those offered by Complainant in connection with the SILABS Marks, and hence, being in a directly competitive business, Respondent registered these domain names for the purpose of disrupting Complainant’s business and getting users to believe that their website was associated, affiliated, supported, or operated in connection with Complainant’s business.
In this concern, it should be noted that Complainant did not submit evidence to demonstrate that the products it sells and offers on the Internet bear the trademark SILABS. Instead, the documentation submitted shows that Complainant’s goods are sold under the trademark SILICON LABS, and therefore there is no proof that Respondent registered the domain name <silabtech.com> to mislead users regarding the trademark SILABS, nor to create an association between Complainant and Respondent.
Thus, the Panel finds that Respondent has not registered or used the <silabtech.com> domain name in bad faith and it has not violated any of the factors listed in Policy ¶ 4(b). I.e., there is no evidence that Respondent has attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not seeking to disrupt Complainant's business inasmuch as Complainant’s business is identified by the trademarks SILICON LABS or
SILICON LABORATORIES, and is not using the domain name to divert Internet users for commercial gain. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <silabtech.com> domain name REMAIN WITH Respondent.
Luz Helena Villamil-Jiménez, Panelist
Dated: July 24, 2012
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