WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
XILINX, Inc. v. Forum LLC
Case No. D2006-0744
1. The Parties
The Complainant is XILINX, Inc. of California, United States of America, represented by Cooley Godward, LLP, United States of America.
The Respondent is Forum LLC of Dominica.
2. The Domain Name and Registrar
The disputed domain name <xylinx.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2006. On June 16, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On June 26, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2006.
The Center appointed Charné Le Roux as the sole panelist in this matter on August 8, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a semi-conductor manufacturer and supplier of programmable logic devices (PLD’s) and is based in Silicon Valley, USA. The Complainant has been the subject of numerous technical and business press articles. It owns a U.S. trademark registration for the XILINX mark dated July 11, 1995. It also owns a U.S. trademark registration for the mark XILINX & X Design dated September 8, 1992. The Complainant owns trade mark registrations for the XILINX mark and other marks incorporating XILINX in numerous other countries across the world. It also owns the domain name “xilinx.com” and the website at this domain name, which it uses as its primary corporate website. The Complainant furthermore owns a U.S. trade mark registration for the mark SPARTAN dated June 13, 2000. It owns trademark registrations for the SPARTAN mark in other countries across the world. It also uses the name ISE in connection with its design software used for programming and testing PLD’s and the names CPLD and FPGA in connection with the two major types of PLD’s that it supplies. The Complainant’s stock is listed on the NASDAQ National Market System.
The Respondent registered the Disputed Domain Name on May 23, 2002. A cease and desist letter was sent to Moniker Privacy Services, apparently a private registry service of the Registrar in this dispute, on March 10, 2006. The same letter was sent on March 15, 2006, to a responsible party at Moniker Privacy Services. An update was subsequently effected with respect to the detail reflected against the Disputed Domain Name on March 15, 2006. A further copy of the cease and desist letter was then sent to the Respondent on April 24, 2006.
The Disputed Domain Name is currently owned by the Respondent on record and is connected to a website which features sponsored links to the websites of the competitors of the Complainant and also the website of the Complainant. It also offers links to unrelated websites including those related to travel and finance. The website further features the names FPGA, CPLD, ISE and SPARTAN with links to websites of the competitors of the Complainant and other third parties providing products and services related to that of the Complainant.
5. Parties’ Contentions
The Complainant contends that it is a world leader in PLD’s which it sells to an extensive range of electronics and other device manufacturers around the world. It states that it is the subject of extensive coverage by investment analysts and that in December 2005, its market capitalization was USD8.8 billion. For its fiscal year in 2005, the Complainant’s worldwide revenue was USD1.57 billion. The Complainant owns U.S. trademark registrations for the marks XILINX and XILINX & X Design and SPARTAN. It also owns registrations for XILINX and other marks incorporating the XILINX term as well as the SPARTAN mark in other countries across the world.
The Complaint contends it coined the trademark XILINX and that it has used this mark consistently and continuously as its trademark, trade name and corporate name since September 1985.
The Complainant contends that the Disputed Domain Name is confusingly similar to its XILINX trade mark because it consists of a slight typographical variation and is designed to lead a consumer who would misspell or misstype the XILINX trade mark to the Respondent’s website. The Complainant provided evidence in support of such third party misspellings.
The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a. the Respondent is not a distributor or licensee of the Complainant and has no relationship of any nature with the Complainant;
b. the Respondent has knowledge of the Complainant’s reputation in its products and services because of the fame that attaches to the Complainant’s XILINX trade mark and the fact that the Respondent has used other trade marks and names associated with the Complainant and products used in the Complainant’s field of business on its website.
c. the Respondent does not own any relevant trademarks or applications to register the trade marks XYLINX and it is not commonly known by the name XYLINX;
d. the Respondent does not appear to conduct any bona fide business at the website associated with the Disputed Domain Name, other than providing a collection of advertising links;
e. the Respondent’s website incorporates commercial advertising links to third parties which are in many instances competitors of Complainant.
The Complainant furthermore contends that the Respondent acquired and uses the Disputed Domain Name in bad faith. The Complainant indicates that:
a. the Respondent provides competing goods under a confusingly similar or nearly identical trade mark in a blatant attempt to mislead Internet users.
b. the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the Complainant’s business;
c. the Respondent is deemed to have constructive notice of the Complainant’s trademark rights by virtue of the Complainant’s numerous trade mark registrations for XILINX as well as marks containing the XILINX trademark;
d. the Respondent is deemed to have actual notice of the Complainant’s business when it registered the Disputed Domain Name because the Complainant was founded well before the Respondent registered the Disputed Domain Name and the Complainant is furthermore well known. In support of the Complainant’s contention of the Respondent’s actual notice, reference is made to the Respondent’s use of other trade marks owned by the Complainant as well as terms directly related to the Complainant’s business;
e. the Respondent uses the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the XILINX mark as to the source, sponsorship, affiliation or endorsement of its website;
f. the Respondent has refused to respond to the Complainant’s cease and desist letters.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Matters
a. Default of the Respondent
The Respondent has not reacted to the Complaint but this does not relieve the Complainant of the burden of proof. The Respondent’s failure to deny the Complainant’s allegations and the evidence submitted by the Complainant do, however, in term of the Rules, permit the Panel to draw appropriate inferences.
6.2. Substantive Matters
Paragraph 4 of the Policy requires that the Complainant proves each of the following three elements in order for the Disputed Domain Name to be transferred:
a. that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to the trademark or service mark in which the Complainant has rights and;
b. that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name and;
c. that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has proven that it owns rights in the trademark XILINX, the mark XILIXN & X Design and the mark SPARTAN through registration and use in the United States of America and also other countries worldwide.
The Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark XILINX. The Disputed Domain Name consists of a slight typographical variation of the XILINX trademark. The Panel accepts the evidence presented by the Complainant of the occasional misspelling by third parties of the Complainant’s trademark XILINX as XYLINX. It has been held by previous panels (and the Complainant has provided a list of a number of supporting panel decisions in this respect), that the misspelling or the typographical variation of a trademark does not assist the Respondent in escaping a finding of confusing similarity.
The Panel finds for the Complainant on the first element.
B. Rights or Legitimate Interests
The Panel in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 summarizes the burden of proof in respect of paragraph 4(a)(ii) of the Policy, namely that, once the Complainant has asserted that the Respondent has no rights or legitimate interests, the burden of proof shifts to the Respondent. The Respondent must then make more than an assertion that it has rights or legitimate interests and must provide factual evidence in support of its claim.
Paragraph 4(c) of the Policy provides circumstances whereby the Respondent may demonstrate its rights or legitimate interests in a domain name. The Complainant in this matter has made the required assertion to which the Respondent has not reacted.
The Panel finds that the Respondent’s failure to file a response has demonstrated a lack of legitimate interest. See Time Out Group Ltd. v. Marc Jacobson, WIPO Case no. D2001-0317. Furthermore, on the facts of this matter, the Respondent uses the Disputed Domain Name to promote the sale of goods in competition with the Complainant. The Panel finds that Internet users will be attracted to the website linked to the Disputed Domain Name by the XILINX trademark and that they will access the website because they are interested in the Complainant’s goods. It appears that the Respondent’s only interest in the Disputed Domain Name is to derive a benefit from the goodwill that attaches to the Complainant’s trademark and to share in revenues that are generated by the diverted traffic through the sponsored links.
The Panel finds that the Complainant has discharged its onus in proving that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. The Complainant relies on paragraph 4(b)(iii) of the Policy which provides for bad faith to be evidenced through the registration of a domain name primarily for the purpose of disrupting the business of a competitor.
The Complainant also relies on paragraph 4(b)(iv) of the Policy which provides that bad faith may be evidenced by use by the Respondent of a domain name with the intention to attract, for commercial gain, Internet users to respond to its website or other online location by creating the likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or the product or service on its website or location.
The Panel finds that the Complainant has made out a case in terms of paragraph 4(b)(iii) of the Policy. The Panel also finds that the Respondent is intentionally diverting Internet users to its website by exploiting the confusing similarity between the Disputed Domain Name and the Complainant’s well known XILINX trade mark and that it is engaging in such conduct in order to reap commercial benefits. Other instances of bad faith constituted in the actual and constructive knowledge of the Complainant’s mark by the Respondent and the Respondent’s failure to respond to the Complainant’s requests to transfer the Disputed Domain Name, were also advanced by the Complainant. Having found for the Complainant on the basis of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy the Panel does not consider it necessary to deal with the additional evidence of bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <xylinx.com> be transferred to the Complainant.
Charné Le Roux
Dated: August 22, 2006