Xilinx Inc. v. WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC.
Claim Number: FA1602001659030
Complainant is Xilinx Inc. (“Complainant”), represented by Britt L. Anderson of K&L Gates LLP, California, United States. Respondent is WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC. (“Respondent”), Washington, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xilinxinc.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2016; the Forum received payment on February 1, 2016.
On February 1, 2016, Enom, Inc. confirmed by e-mail to the Forum that the <xilinxinc.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2016 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@xilinxinc.com. Also on February 3, 2016, 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 February 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it has been using the XILINX mark in connection with its computer hardware and software products, most notably its integrated circuit devices and software for programming integrated circuits, since 1985. Complainant has registered the XILINX mark with the United States Patent and Trademark Office in 1992. The mark is also registered in numerous other countries around the world.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark, adds the generic term “inc,” and adds the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Respondent makes no active use the domain name to resolve to a web site, but Respondent has attempted to use the E-mail address associated with the domain name to impersonate Complainant’s CEO, Moshe Gavrielov, and to phish for confidential company information from Complainant’s employees. Complainant cites UDRP precedent to support its position.
Further, says Complainant, the registrant has provided to the privacy service as contact information the name of Complainant’s CEO. That is, the registrant fraudulently identified itself as Moshe Gavrielov when registering the disputed domain name with the Registrar. The registrant then used the disputed domain name to attempt to cause Complainant to transfer funds under false pretenses.
According to Complainant, Internet users, including Complainant’s own customers and employees, are highly likely to be confused by the use of the XILINX mark alone as well as combined with the name of a high-ranking XILINX employee. Such phishing schemes, composed of fraudulent use of a complainant’s mark, are evidence that a Respondent both registered and used the subject domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark XILINX and uses it in connection with its computer hardware and software products.
Complainant’s registration of its mark dates back to 1992.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The registrant fraudulently identified itself as Complainant’s CEO when registering the disputed domain name. The registrant then used the disputed domain name and to phish for confidential company information from Complainant’s employees, and to attempt to cause Complainant to transfer funds under false pretenses.
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.
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 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.”).
The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark, adds the generic term “inc,” and adds the gTLD “.com.” Previous panels have held that the addition of a generic term to a complainant’s mark does not adequately differentiate a disputed domain from a complainant’s mark per Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Previous panels have also decided that the affixation of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “WHOIS AGENT / WHOIS PRIVACY PROTECTION SERVICE, INC.” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. Accordingly, the Panel finds no basis in the available record to find Respondent commonly known by the domain pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, the disputed domain name does not resolve to an active website. Prior panels have held that a respondent’s failure to make any active use of a domain name does not constitute 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). For this reason, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent has attempted to use the E-mail address associated with the domain name to impersonate Complainant’s CEO, Moshe Gavrielov, and to phish for confidential company information from Complainant’s employees. Previous panels have determined that a respondent’s attempt to pass itself off as a complainant, or a respondent’s attempt to phish, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (concluding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). While these panel findings have been directed at actions targeting consumers, not respondents, and at the use of the disputed domain name in a website rather than an E-mail address, they apply equally to the present case.
The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Respondent has attempted to use the E-mail address associated with the domain name to impersonate Complainant’s CEO, Moshe Gavrielov, and to attempt to cause Complainant to transfer funds under false pretenses. Previous panels have determined that a respondent’s attempt to pass itself off as a complainant and to induce fund transfers constitute bad faith use in the sense of the Policy. See National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Nat. Arb. Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant’s President and CEO); see also Capital One Financial Corporation and Capital One Bank v. Austin Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith where respondent used complainant’s mark to fraudulently induce transfer of credit and personal identification information).
Consequently, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xilinxinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 27, 2016
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