Broadcom Corporation v. Ibecom PLC
Claim
Number: FA0411000361190
Complainant is Broadcom Corporation (“Complainant”), represented
by Gary J. Nelson, of Christie, Parker & Hale LLP, 350 West Colorado Boulevard, Suite 500, P.O. Box 7068, Pasadena,
CA 91109-7068. Respondent is Ibecom PLC (“Respondent”), 72 New Bond
Street, London, London 1 WS 1 RR, United Kingdom.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ebroadcom.com>, registered with Domaindiscover.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
4, 2004; the National Arbitration Forum received a hard copy of the Complaint
on November 5, 2004.
On
November 5, 2004, Domaindiscover confirmed by e-mail to the National
Arbitration Forum that the domain name <ebroadcom.com> is
registered with Domaindiscover and that Respondent is the current registrant of
the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover
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
November 5, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
November 29, 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@ebroadcom.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
December 8, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Crary 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." 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 <ebroadcom.com>
domain name is confusingly similar to Complainant’s BROADCOM mark.
2. Respondent does not have any rights or
legitimate interests in the <ebroadcom.com> domain name.
3. Respondent registered and used the <ebroadcom.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Respondent
Broadcom Corporation, owns trademark rights for the BROADCOM mark through
registration with the United States Patent and Trademark Office (Reg. No.
2,132,930, issued January 27, 1998) and the European Community (Reg. No.
763540, issued August 23, 1999). Since
at least as early as November 1994, Complainant began using the BROADCOM mark
continuously in connection with providing highly integrated circuits and
computer hardware and software in the field of digital broadband communications
and networking of voice, video and data services.
Respondent
registered the <ebroadcom.com> domain name on October 23,
2004. The disputed domain name resolves
to an inactive website.
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.
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
registered the BROADCOM mark with the USPTO and the European Community. Therefore, Complainant has established
rights in the marks pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
The <ebroadcom.com>
domain name incorporates Complainant’s BROADCOM mark in its entirety. Respondent has simply prefaced the mark with
the letter “e.” It is well established
that adding a single letter to a third-party mark fails to alleviate the
confusing similarity that arises as the result of incorporating a third-party
mark within a domain name. Therefore,
consistent with prior decisions under the Policy, the Panel finds the <ebroadcom.com>
domain name confusingly similar to Complainant’s BROADCOM mark pursuant
Policy ¶ 4(a)(i). See Computerized
Security Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“[T]he addition of the letter ‘C’ does nothing to 'distinguish'
Respondent's domain name from Complainant's registered trademark, which remains
the principal element of the domain name.”); see also Am.
Online, Inc. v. Inforian, Inc., FA 115086 (Nat. Arb. Forum Aug. 26, 2002) (“Respondent's <cicq.net > domain name is confusingly similar
to Complainant's ICQ mark because it incorporates Complainant's entire mark and
merely adds the letter ‘c’ to the beginning.”).
Likewise, the
addition of the top level domain “.com” to the disputed domain name is
irrelevant to the analysis. See Victoria's Secret v. Hardin, FA 96694
(Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com>
domain name is identical to Complainant’s BODY BY VICTORIA mark); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant).
Complaniant has
established Policy ¶ 4(a)(i).
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
Respondent lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to
accept all reasonable allegations set forth in the Complaint as true. See Honeywell Int’l Inc. v. Domain
Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of
Respondent to respond to the Complaint functions both as an implicit admission
that Respondent lacks rights to and legitimate interests in the domain names,
as well as a presumption that Complainant’s reasonable allegations are true.”);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names); see also Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true).
There is nothing
in the record to indicate that Respondent is commonly known by the <ebroadcom.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its
failure to imply that Respondent is commonly known by the disputed domain name,
is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by
the domain name prior to registration of the domain name to prevail").
Furthermore, the disputed domain name resolves to an inactive website,
and Respondent has failed to demonstrate preparations to use the <ebroadcom.com> domain name. Passive holding of a domain name that is confusingly similar to
another’s mark does not fall within the parameters of Policy ¶¶ 4(c)(i) or
(iii). See Boeing
Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or
legitimate interests where Respondent has advanced no basis on which the Panel
could conclude that it has a right or legitimate interest in the domain names,
and no use of the domain names has been established); see also AT&T Corp. v. Domains by Brian Evans,
D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests
where Respondent did not provide any documentation on the existence of its
alleged company that might show what the company’s business was, or how the
company’s years of existence, if it ever existed, might mesh with Complainant’s
trademark claims); see also Pharmacia
& Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no
rights or legitimate interests where Respondent failed to submit a Response to
the Complaint and had made no use of the domain name in question).
Complainant has established Policy ¶ 4(a)(ii).
Respondent is
passively holding the <ebroadcom.com> domain name. The disputed domain name resolves to an
inactive website and Respondent has not demonstrated preparations to use the
domain name pursuant to a bona fide offering of goods or services. Moreover, the Panel cannot perceive
respondent using using the domain name in a manner that would not infringe upon
Complainant’s mark. Therefore, the
Panel finds Respondent registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(a)(iii) through its passive holding of the
name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that Respondent’s passive holding of the domain name satisfies the
requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name
without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain
name or website that connects with the domain name, and that passive holding of
a domain name permits an inference of registration and use in bad faith); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”); see also Alitalia
–Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23,
2000) (finding bad faith where Respondent made no use of the domain name in
question and there are no other indications that Respondent could have
registered and used the domain name in question for any non-infringing
purpose).
Complainant has
established 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 <ebroadcom.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
December 22, 2004
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