Broadcom Corporation, a California Corporation v. Domain Management / Syed Hussain
Claim Number: FA1112001419370
Complainant is Broadcom Corporation, a California Corporation (“Complainant”), represented by Susan M. Natland of Knobbe, Martens, Olson & Bear, LLP, California, USA. Respondent is Domain Management / Syed Hussain (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <broadcomnetlogic.com>, registered with Name.com LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2011; the National Arbitration Forum received payment on December 9, 2011.
On December 12, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <broadcomnetlogic.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.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 December 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 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@broadcomnetlogic.com. Also on December 15, 2011, 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 January 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <broadcomnetlogic.com> domain name is confusingly similar to Complainant’s BROADCOM mark.
2. Respondent does not have any rights or legitimate interests in the <broadcomnetlogic.com> domain name.
3. Respondent registered and used the <broadcomnetlogic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers networking, communications, computer, and technology products throughout the world under its BROADCOM mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BROADCOM mark (e.g., Reg. No. 2,132,930 registered January 27, 1998). On September 12, 2011, Complainant announced that it planned to acquire Netlogic Microsystems, Inc.
Respondent registered the <broadcomnetlogic.com> domain name on September 12, 2011. The disputed domain names resolves to a website that contains hyperlinks that resolve to competing third-party websites. Respondent offered to sell the disputed domain name to the general public and to Complainant for $900.
Respondent has been a respondent in previous UDRP proceedings in which Respondent was required to transfer the disputed domain names to the respective complainants. E.g., Prudential Ins. Co. of Am. v. Hussain, D2010-1889 (WIPO Jan. 22, 2011); Boyd Gaming Corp. v. Hussain, FA 1336260 (Nat. Arb. Forum Aug. 30, 2010); State Farm Mut. Auto. Ins. Co. v. Hussain, FA 1322232 (Nat. Arb. Forum June 6, 2010); Bloomberg Fin. L.P. v. Hussein, FA 1304768 (Nat. Arb. Forum Mar. 11, 2011).
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."
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.”).
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.
Complainant claims rights in its BROADCOM mark and supplies the Panel with its numerous trademark registrations with the USPTO for its BROADCOM mark (e.g., Reg. No. 2,132,930 registered January 27, 1998) in support of this claim. The Panel determines that such evidence sufficiently demonstrates Complainant’s rights in the BROADCOM mark pursuant to Policy ¶ 4(a)(i). 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).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant argues that Respondent’s <broadcomnetlogic.com> domain name is confusingly similar to Complainant’s BROADCOM mark. The disputed domain name combines Complainant’s BROADCOM mark with the descriptive term “netlogic,” which is the name of the company Complainant announced it is acquiring, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a descriptive term does not remove a disputed domain name from the realm of confusing similarity. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel further concludes that the addition of a gTLD 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); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Consequently, the Panel holds that Respondent’s <broadcomnetlogic.com> domain name is confusingly similar to Complainant’s BROADCOM mark under Policy ¶ 4(a)(i).
The Panel finds Complainant satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights or legitimate interests in the <broadcomnetlogic.com> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to conclude that Respondent does not have rights or legitimate interests in the <broadcomnetlogic.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <broadcomnetlogic.com> domain name. Complainant avers that Respondent is not licensed or authorized to use Complainant’s BROADCOM mark in a domain name. Complainant also provides the WHOIS information for the disputed domain name, which lists “Domain Management / Syed Hussain” as the registrant. Based on this information, the Panel concludes that Respondent is not commonly known by the <broadcomnetlogic.com> domain name for the purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent’s <broadcomnetlogic.com> domain name resolves to a website that contains third-party hyperlinks. According to Complainant, these third-party hyperlinks resolve to Complainant’s competitors in the communications, technology, computer, and networking industries. Complainant asserts that Respondent commercially profits from this use by receiving click-through fees. In the absence of a Response, the Panel presumes Complainant’s allegations to be true and finds that Respondent makes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <broadcomnetlogic.com> domain name pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
Complainant further asserts that Respondent offered to sell the <broadcomnetlogic.com> domain name to Complainant and the general public. Complainant presents a copy of a general domain name auction website that lists the disputed domain name for sale. Complainant also includes e-mails from Respondent that offer to sell the disputed domain name to Complainant for $900. Complainant argues that $900 exceeds Respondent’s registration costs. Thus, the Panel concludes that Respondent lacks rights and legitimate interests in the <broadcomnetlogic.com> domain name for the purposes of Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).
According to Complainant, Respondent offered to sell the <broadcomnetlogic.com> domain name to Complainant and to the general public. Complainant provided the Panel with evidence of both offers, including an offer from Respondent to sell the disputed domain name for $900 to Complainant. The Panel determines that such an offer for sale demonstrates Respondent’s Policy ¶ 4(b)(i) bad faith registration and use of the <broadcomnetlogic.com> domain name. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); see also Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use).
Complainant avers that Respondent has been a respondent in previous UDRP proceedings in which Respondent was required to transfer the disputed domain names to the respective complainants, and Complainant provided a list of these cases. E.g., Prudential Ins. Co. of Am. v. Hussain, D2010-1889 (WIPO Jan. 22, 2011); Boyd Gaming Corp. v. Hussain, FA 1336260 (Nat. Arb. Forum Aug. 30, 2010). Based on this evidence, the Panel holds that Respondent registered and uses the <broadcomnetlogic.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).
Complainant claims that Respondent’s <broadcomnetlogic.com> domain name resolves to a website that hosts competing hyperlinks. Complainant argues that Respondent’s registration and use of the disputed domain name diverts Internet traffic from Complainant to Respondent’s website. The Panel infers that this diversion disrupts Complainant’s business. Thus, the Panel finds that Respondent registered and uses the <broadcomnetlogic.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant asserts that Respondent receives click-through fees each time an Internet user clicks on one of the aforementioned hyperlinks. Complainant contends that Respondent chose the <broadcomnetlogic.com> domain name because of its confusing similarity to Complainant’s BROADCOM mark in order for Respondent to commercially benefit by creating confusion as to Complainant’s association with the disputed domain name. The Panel believes this contention to be true and concludes that Respondent registered and uses the <broadcomnetlogic.com> domain name in bad faith for the purposes of Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
As noted in the findings, Complainant announced on September 12, 2011 that it planned to purchase Netlogic Microsystems, Inc. According to the WHOIS information, Respondent registered the <broadcomnetlogic.com> domain name on September 12, 2011. Complainant argues that the registration of the disputed domain name on the same day as the announcement evidences opportunistic bad faith registration under Policy ¶ 4(a)(iii). The Panel agrees and finds accordingly. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
The Panel finds Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <broadcomnetlogic.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 17, 2012
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