NATIONAL ARBITRATION FORUM

 

DECISION

 

Xilinx Inc. v. iran-xilinx

Claim Number: FA1210001465506

PARTIES

Complainant is Xilinx Inc. (“Complainant”), represented by Britt L. Anderson of K&L Gates LLP, California, USA.  Respondent is iran-xilinx (“Respondent”), Dubai, United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <iran-xilinx.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

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.

 

David A. Einhorn appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2012; the National Arbitration Forum received payment on October 4, 2012.

 

On October 4, 2012, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <iran-xilinx.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@iran-xilinx.com.  Also on October 8, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant’s Allegations

Complainant has used the XILINX mark in the trade of computer hardware and software products, particularly integrated circuit devices and programming

circuits, since 1985. Complainant has registered the <xilinx.com> domain to provide information related to its products and services, along with other domains, such as <china.xilinx.com>, in order to direct international customers to

appropriate vendors.  Furthermore, Complainant has registered the "XILINX" mark and various logos with the United States Patent & Trademark Office (USPTO) (See, e.g., Reg. No. 1,904,281 registered July 11, 1995).

Respondent's <iran-xilinx.com> domain is confusingly similar to Complainant's "XILINX" mark.  Complainant has never authorized or endorsed Respondent to use its marks. Furthermore, because Respondent merely adds "iran" to Complainant's mark, Respondent's domain confuses Internet users as to

whether or not they are being directed to Complainant's official website for sales and services in the country of Iran. The disputed domain name is confusingly similar because Respondent merely adds the word "iran" to Complainant's well established mark.

 

Respondent has neither rights nor legitimate interests in the disputed domain name. Respondent did not register the mark until 2010, twenty-five years after Complainant began using the mark in trade. Furthermore, the disputed domain features infringing uses of Complainant's marks in an attempt to deceive Internet users into buying Respondent's goods and services under the belief that they are

purchasing from Complainant. The goods being sold by Respondent also include Complainant logos and marks. In trying to pass itself off as Complainant, Respondent fails to establish a bona fide offering of goods or services. The WHOIS record clearly shows that the domain is registered to a "Mr. Entezam."

 

Respondent has blatantly copied Complainant's XILINX logo and used it in the

advertisement and sale of DVD copying devices, including by labeling the devices themselves with Complainant's logo. Respondent registered the           <iran-xilinx.com> domain in bad faith for commercial gain by creating a likelihood of confusion about the website resolving from the disputed domain name and the

origin of Respondent's goods and services. Respondent also registered the disputed domain name in bad faith because it is abundantly clear that Respondent registered the <iran-xilinx.com> domain name with full knowledge of Complainant's rights in the mark as Respondent copied the XILINX logo and displays Complainant's products.

 

B. Respondent

The Panel notes that Respondent registered the <iran-xilinx.com> domain name on August 14, 2010.

 

FINDINGS AND DISCUSSION

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(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.").

 

Identical and/or Confusingly Similar

 

Complainant has established rights to the XILINX mark through registration with the USPTO (e.g. Reg. No. 1,904,281 registered July 11, 1995). See Reebok lnt'l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant

 

to Policy ¶ 4(a)(i)). The Panel notes that Complainant need not establish specific rights in Respondent's country of operation. See Koninklijke KPN N.V. v. Telepathy. Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant contends that the addition of the geographic term "iran" in the disputed <iran-xilinx.com> domain makes the disputed domain confusingly similar to Complainant's mark. Previous panels have held that the addition of geographical term, such as "iran," to a registered mark does not overcome confusing similarity. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) ("...it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark."). Consumers may interpret Respondent's domain to signify Complainant's official website for sales and service in the country of Iran. For this reason, the Panel concludes that Respondent's <iran-xilinx.com> domain is confusingly similar to Complainant's XILINX mark under Policy ¶ 4(a)(i).

 

Thus, Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant contends that Respondent is not commonly known by the <iran-xilinx.com> domain because the WHOIS information fails to establish a link between the <iran-xilinx.com> domain and Respondent. Complainant argues that the WHOIS information for the disputed domain identifies the registrant as "Mr. Entezam," and no reference in the record illustrates a tie between Respondent and the disputed domain name. Complainant also states that it did not authorize Respondent to use the XILINX mark. Previous panels have concluded a respondent not to be commonly known by a disputed domain name based on a combination of the WHOIS information, the respondent's lack of authorization to use the mark, and the absence of other evidence. Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore determines that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).

 

Complainant further contends that Respondent is making neither a bona fide offering of goods or services nor legitimate noncommercial or fair use of the disputed domain name. Complainant asserts, and this Panel accepts, that the <iran-xilinx.com> domain name contains numerous usages of the XILINX mark and logo for the purpose of marking electronics products highly related to Complainant's computer hardware and software products. Complainant contends, and this Panel accepts, that the resolving website displays the XILINX mark and logo on both the homepage and on the product images. The Panel concludes that Respondent is attempting to pass itself off as Complainant so that Respondent may profit by selling its own products at the disputed domain name. UDRP precedent indicates that a respondent cannot establish a bona fide offering of goods or services or a legitimate noncommercial or fair use by attempting to pass itself off as Complainant in order to sell products and services. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) ("It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant. . . ."). For this reason, the Panel

concludes that the Respondent has made neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <iran-xilinx.com> domain name under Policy ¶¶ 4(c)(i) and (iii).

 

Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant submits, and this Panel agrees, that Respondent's use of the XILINX mark on the resolving website and on the product images indicates that Respondent was aware of Complainant's rights in the mark. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Pfizer, Inc. V. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").

 

Complainant also alleges that Respondent seeks to confuse Internet users into believing Respondent is sponsored and/or affiliated with Complainant in order to create commercial gains for Respondent. Complainant points out the use of the XILINX mark and logo on both the disputed domain name's resolving website and the products sold on the website. Complainant contends, and this Panel finds, that Respondent aims to pass itself off as Complainant and pass its offered products off as those of Complainant for Respondent's own profit. Thus, Respondent has both registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb.

Forum May 31, 2002) ("Respondent is using the domain name at issue to resolve to a website at which Complainant's trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant's

business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy)”.

 

Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <iran-xilinx.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David A. Einhorn, Panelist

Dated:  November 15, 2012