Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Silicon Image, Inc., Sunnyvale, CA, USA ("Complainant") represented by Karen P. Anderson, of Fenwick & West LLP. The Respondent is Silicon Image, Inc., Mountain View, CA, USA ("Respondent") represented by Marc Bendinelli, of Bendinelli Law Office.

The domain name at issue is "siliconimage.com", registered with Network Solutions, 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 a panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 4, 2000; the Forum received a hard copy of the Complaint on December 4, 2000.

On December 8, 2000, Network Solutions, Inc. (NSI) confirmed by e-mail to the Forum that the domain name "siliconimage.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 8, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 28, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@siliconimage.com by e-mail.

On January 22, 2001 pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

A. Complainant

The Complainant contends that the domain name that is the subject of this Complaint is identical or confusingly similar to their name and trademark; that the Respondent has no rights or legitimate interests in the domain name; and, that the domain name was registered in bad faith.

B. Respondent

The Respondent contends that he has rights to the domain name and that the domain name was not registered in bad faith.

The Complainant’s company was founded in 1995 and is a worldwide provider of semiconductor solutions for high-speed digital communications, with emphasis on the graphic-display market. They are the developer of display interfaces and PanelLink technology. The Complainant has reported total assets of over $103 million dollars and product revenue of over $51 million dollars for the year 2000. The company went public in 1999. Complainant has been using SILICON IMAGE as its trade name, trademark and service mark since at least 1996, developing considerable goodwill and customer recognition in its name and mark.

At the time of the registration, Respondent, Matthew Schrank (who is not listed as the actual Respondent on the Complaint), was a 16-year old boy living with his parents in Beijing, China, where his father was engaged in consulting work for the United Nations. The Respondent was interested in designing web pages and states he was attracted to the domain name because of his family’s long friendship and association with the founders of a company named SiliconGraphics, Inc. He also states that he wanted a name that conveyed the idea of digitally generated art, and since the art he produced was silicon based, he began looking for names to reflect this.

There is no evidence presented that supports Matthew Schrank’s contention that he is the owner of Silicon Image, Inc. In fact, the "whois" results for siliconimage.com show Silicon Image, Inc. as the Registrant, Emory J. Derrick of Dawn Information Systems Co., Ltd. as the Administrative Contact, Ted Lio, Guam Wireless Telephone Co. as the Technical Contact and Alan Sik, Dawn Information Systems Co., Ltd. as the billing contact. The name of Matthew Schrank does not appear on the registration; however, Complainant has learned from Dawn Information Systems Co., Ltd. that Lawrence Shrank, Matthew’s father, was the purported owner of the domain name, and that they no longer had a relationship with the Respondent or Mr. Lawrence Schrank. Further, there has been no evidence presented that the alleged company Silicon Image, Inc. is an official entity. It would appear that the Respondent misrepresented to NSI that it is a corporation, when it is not incorporated.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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 Respondent does not offer any evidence to dispute this allegation. The domain name at issue is virtually identical to Complainant’s trade name and mark, but for the addition of the ".com" suffix. See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name "wembleystadium.net" is identical to the WEMBLEY STADIUM mark).

The Complainant has used the trade name, trademark and service mark since at least 1996. See Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it ‘has rights’ under the ICANN Policy).

Further, the Complainant has not licensed or otherwise authorized Respondent to use its trade name or trademark for any purpose. It appears that the Respondent is not using or preparing to use the domain name in connection with any bona fide offering of goods or services, nor is Respondent using it for legitimate non-commercial or fair use. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

When the domain name was registered the information provided to NSI was:

Registrant : Silicon Image, Inc.

Administrative Contact: Emory Derrick, Dawn Information Systems

Technical Contact: Ted Liao. Guam Wireless Telephone Co.

Billing Contact: Alan Sik, Dawn Information Systems

The Complainant attempted to contact the Respondent about this matter by U.S. Mail, e-mail, and facsimile using a variety of addresses. Mail directed to Respondent and/or its contacts at the address listed in the Whois were all returned undeliverable. The Complainant was informed by Dawn Information Systems that the Registrant was owned by Lawrence Schrank and that Dawn Information Systems no longer had a relationship with the Registrant or Mr. Lawrence Schrank. The Respondent also misrepresented to the Registrar that it was a corporation, when it was not incorporated. The Respondent also admits that he did not have a company named "Silicon Image, Inc." and never resided at the address given to NSI. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); Video Direct Distributors, Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that Respondent has acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).

Further, Complainant reports that its customers frequently go to Respondent’s website by mistake when looking for the Complainant’s website, causing confusion among its customers and disrupting its business and tarnishing its reputation. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a web site sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that web site).

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name SILICONIMAGE.COM be transferred from the Respondent to the Complainant.