Broadcom Corporation v. Alexander
Novostroev
Claim Number: FA0408000318098
PARTIES
Complainant
is Broadcom Corporation (“Complainant”),
represented by Gary J. Nelson, of Christie, Parker & Hale LLP, 350 West Colorado Boulevard, Suite 500, PO Box 7068, Pasadena,
CA 94409-7068. Respondent is Alexander Novostroev (“Respondent”),
4th Floor, 2-24-3, Higashi, Shibuya ward, Tokyo 150-0011, Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <broadcomm-study.com>,
registered with Aaaq.com.
PANEL
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.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 25, 2004; the Forum received a hard copy of the
Complaint on August 26, 2004.
On
August 27, 2004, Aaaq.com confirmed by e-mail to the Forum that the domain name
<broadcomm-study.com> is
registered with Aaaq.com and that Respondent is the current registrant of the
name. Aaaq.com has verified that
Respondent is bound by the Aaaq.com 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
August 31, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
20, 2004 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@broadcomm-study.com by e-mail.
A
timely Response was received and determined to be complete on September 15,
2004.
Complainant
submitted an Additional Submission on September 20, 2004. The Panel has considered Complainant’s Additional
Submission to the extent that it includes relevant material that could not
reasonably have been included in the initial Complaint.
On
September 23, 2004, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is a large and well-known provider of computer hardware and software for
broadband communications. Since at
least 1994 Complainant has used its trademark BROADCOM and variations thereof
for computer hardware, software, and related goods and services. Complainant’s marks are registered in both
the United States and Japan.
Complainant’s total annual revenue is approximately $1.61 billion; all
of its products and services are associated with its BROADCOM trademark.
Complainant
alleges that the domain name registered by Respondent, <broadcomm‑study.com>, is confusingly similar to
Complainant’s BROADCOM mark.
Complainant
further alleges that Respondent lacks rights or legitimate interests in the
disputed domain name. Complainant
contends that under the Policy, Respondent bears the burden of proving that he
has rights or legitimate interests in the domain name. See FAO Schwarz v. Zuccarini, No. FA95828 (NAF Dec. 1, 2000). Complainant asserts that any use by
Respondent of Complainant’s mark, including within the designations “broadcomm”
and “broadcomm‑study,” is a direct infringement of Complainant’s
trademark rights, and therefore cannot be a basis for rights or legitimate
interests. Complainant also suggests
that a lack of rights or legitimate interests may be inferred from Respondent’s
failure to develop an active website or otherwise make use of the disputed
domain name.
Finally,
Complainant alleges that Respondent registered and is using the disputed domain
name in bad faith, because he is passively holding the domain name, and because
the BROADCOM trademark is so obviously connected with Complainant that use by
someone with no connection to Complainant suggests bad faith.
B. Respondent
Respondent
denies that the disputed domain name is confusingly similar to
Complainant’s. Respondent claims that
the domain name is derived from the words “broad communications,” and refers to
the name of Respondent’s company, Broadcomm, Inc., which has been registered in
accordance with Japanese law.
Respondent further claims that the word “study” represents the main word
in the disputed domain name.
Respondent
asserts that he has rights or legitimate interests in the disputed domain name
based upon its intended use to provide information about studying in Japan,
which does not infringe upon Complainant’s marks because it involves a very
different field. Respondent states that
his company’s website is currently under construction and will be finished
soon. For the same reasons, Respondent
denies that the disputed domain name was registered or is being used in bad
faith.
C.
Additional Submissions
In
its Additional Submission, Complainant contends that Respondent, an individual,
is the registrant of the disputed domain name, and therefore cannot assert in
this proceeding any rights or legitimate interests of the Japanese company
Broadcomm, Inc.
Complainant
also states that it received a letter from Respondent dated September 15,
2004, offering to sell the disputed domain name in exchange for the
“significant” costs Respondent has expended to date, and asserts that this
letter is evidence of Respondent’s bad faith.
As
noted above, the Panel has considered the Additional Submission to the extent
that it includes relevant material that could not reasonably have been included
in the initial Complaint. In
particular, the Panel views the letter dated September 15, 2004, as primarily
an attempt to initiate settlement negotiations that is of little or no
relevance to the present matter.
FINDINGS
The Panel finds that the disputed domain
name <broadcomm‑study.com>
is confusingly similar to Complainant’s BROADCOM mark; that Respondent lacks
rights or legitimate interests in respect of the disputed domain name; and that
the disputed domain name was registered and has been used in bad faith.
DISCUSSION
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 disputed domain name <broadcomm‑study.com> is
comprised of the Respondent’s trademark, with the last letter repeated, plus a
hyphen and the general term “study,” followed by the generic top-level domain
suffix “.com”. The Panel rejects
Respondent’s contention that “study” represents the main part of the domain
name. To the contrary, the most
significant part of the domain name is clearly “broadcomm.” In the Panel’s view, there is little doubt
that the domain name is confusingly similar to the BROADCOM mark.
The question of rights or legitimate
interests is a closer one. The Panel
initially rejects Complainant’s contention that Respondent bears the burden of
proving that he has rights or legitimate interests. Complainant’s allegation shifts the burden of production to Respondent, but
Complainant retains the burden of proof on this and all other elements required
by the Policy. See, e.g., Do The Hustle, LLC v. Tropic Web, No. D2000-0624 (WIPO
Aug. 21, 2000).
Respondent’s intended use of the domain
name seems very likely to be dilutive (and perhaps infringing) of Complainant’s
well-established trademark rights, and based upon the evidence before the Panel
it does not even appear that Respondent has yet engaged in sufficient
preparations to use the domain name in connection with a bona fide purpose in
commerce. The Panel thus does not
consider Respondent’s intended use of the domain name to be a sufficient basis
for rights or legitimate interests.
Respondent’s strongest claim to rights or
legitimate interests is based upon his argument that the domain name reflects
the name of his company, Broadcomm, Inc., which he claims is registered in
accordance with Japanese law.
Complainant asks the Panel to disregard any rights or interests of
Broadcomm, Inc., on the grounds that the disputed domain name was registered
solely in Respondent’s name.
Respondent has failed to offer any
evidence (aside from his own unsubstantiated statements in the Response itself)
that a company by the name of Broadcomm, Inc., even exists—let alone that such
a company (or, more importantly, its corporate name) “was registered in Tokyo
in strict accordance with Japanese law” as Respondent claims. The Panel therefore does not find rights or
legitimate rights on this basis either.
The Panel finds that Complainant has
sustained its burden of proving that Respondent has no rights or legitimate
interests in respect to the disputed domain name.
The closely related questions of bad
faith registration and use depend largely upon Respondent’s motivation for
selecting the disputed domain name.
Under Paragraph 4(b)(i) of the Policy, bad faith registration and use
may be found based upon indications that the domain name was acquired for the
purpose of selling it at a profit to the trademark owner or a competitor
thereof.
Respondent claims that he selected the
disputed domain name to represent “broad communications” and the name of his
company, Broadcomm, Inc. The fame of
Complainant’s mark and the paucity of evidence regarding Respondent’s
activities (including even the very existence of his company) cast considerable
doubt upon Respondent’s credibility in the view of the Panel. It seems more likely that Respondent
registered the disputed domain name primarily because of its similarity to
Complainant’s name and trademark, and that he has held it in the hope of
selling it at a profit to Complainant or a competitor thereof. If “Broadcomm, Inc.” and Respondent’s
claimed plans for the disputed domain name were anything more than a mere
pretext intended to disguise an attempt to exploit the name’s trademark value,
surely Respondent would have been able to offer the Panel at least something in the way of corroborating
evidence.
The Panel finds that Complainant has
sustained its burden of proving that the disputed domain name was registered
and has been used in bad faith.
DECISION
Having
found that Complainant has established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <broadcomm-study.com>
domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 7, 2004
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page