Broadcom Corporation v. Broad
Communication Inc.
Claim
Number: FA0503000438754
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 Broad Communication Inc. (“Respondent”), 2/25/27, Yunokawa-cho,
Hakodate-shi, 042-0932, Hokkaido, JAPAN.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <broad-com.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
10, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 11, 2005.
On
March 14, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the National Arbitration Forum that the domain name <broad-com.com>
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified
that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names
Worldwide 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
March 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 5, 2005 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@broad-com.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
April 8, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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 <broad-com.com>
domain name is confusingly similar to Complainant’s BROADCOM mark.
2. Respondent does not have any rights or
legitimate interests in the <broad-com.com> domain name.
3. Respondent registered and used the <broad-com.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
provider of highly integrated circuits, computer hardware and software in the
field of digital broadband communications.
Complainant provides highly integrated silicon solutions that enable
broadband communications and networking of voice, video and data services.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the BROADCOM mark (Reg. No. 2,132,930 issued January 27,
1998; Reg. No. 2,392,925 issued July 18, 2000; Reg. No. 2,326,387 issued March
7, 2000; Reg. No. 2,625,799 issued September 24, 2002 and Reg. No. 2,595,174
issued July 16, 2002) and has been continuously using the BROADCOM mark since
November 1994. Additionally,
Complainant holds trademark registration rights in Japan for the BROADCOM mark
(Reg. No. 4,280,890 issued June 4, 1999; Reg. No. 4,422,622 issued October 6,
2000; Reg. No. 4,422,624 issued October 6, 2000; Reg. No. 4,496,079 issued
August 3, 2001 and Reg. No. 4496081 issued August 3, 2001).
Respondent
registered the <broad-com> domain name on May 25, 2004. Respondent’s domain name resolves to a
website that features only a couple of Japanese characters.
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 has
established that it has rights in the BROADCOM mark through registration with
the United States Patent and Trademark office and various international
trademark authorities as well as through continuous use of its mark in
commerce. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
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).
Respondent’s <broad-com.com>
domain name is confusingly similar to Complainant’s mark because
Respondent’s domain name incorporates the BROADCOM mark in its entirety and
merely adds a hyphen between the words “broad” and “com.” Adding a hyphen to Complainant’s registered
mark does not circumvent Complainant’s rights in the mark and is insufficient
to distinguish the domain name from Complainant’s mark under Policy ¶
4(a)(i). See Chernow Communications, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Teleplace,
Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that
the domain names <teleplace.org>, <tele-place.com>, and
<theteleplace.com> are confusingly similar to Complainant’s TELEPLACE
trademark); see also Nintendo of
Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding
<game-boy.com> identical and confusingly similar to Complainant’s GAME
BOY mark, even though the domain name is a combination of two descriptive words
divided by a hyphen).
Additionally,
Respondent’s <broad-com.com> domain name is confusingly similar to
Complainant’s BROADCOM mark because the domain name incorporates Complainant’s
mark in its entirety and deviates with the addition of the generic top-level
domain “.com.” The mere addition of
generic top-level domains does not negate the confusing similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Fed’n of
Gay Games, Inc. v. Hodgson,
D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to Complainant's registered trademark GAY
GAMES); see also Little Six,
Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding
that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE
trademark and service mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See 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); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests in the disputed domain name. See
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
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.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Respondent
is not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See 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"); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) The respondent is not a licensee of
the complainant; (2) The complainant’s prior rights in the domain name precede
the respondent’s registration; (3) The respondent is not commonly known by the
domain name in question).
The disputed
domain name resolves to a website that features only a couple of Japanese
characters. The combination of
Respondent’s failure to respond to the Complaint, failure to develop a website
for the disputed domain name and failure to present to the Panel demonstrable
preparations to use the disputed domain name, is evidence that Respondent lacks
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Pharmacia &
Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where the respondent failed to submit a response to the
complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16,
2000) (finding no rights or legitimate interests in the disputed domain name
where there is no proof that the respondent made preparations to use the
disputed domain name in connection with a bona fide offering of goods and
services before notice of the domain name dispute, the disputed domain name did
not resolve to a website and the respondent is not commonly known by the
disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel finds
that there is no conceivable way Respondent could use the disputed domain name
such that it would not infringe on Complainant’s BROADCOM mark, and therefore
it is illogical to await Respondent’s use of the domain name to find bad faith
use. See Phat Fashions v.
Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under
Policy ¶ 4(a)(iii) even though the respondent has not used the domain name
because “[I]t makes no sense whatever to wait until it actually ‘uses’ the
name, when inevitably, when there is such use, it will create the confusion
described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
the respondent made no use of the domain name in question and there are no
other indications that the respondent could have registered and used the domain
name in question for any non-infringing purpose); see also Red Bull GmbH
v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s
expected use of the domain name <redbull.org> would lead people to
believe that the domain name was connected with the complainant, and thus is
the equivalent to bad faith use); 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”).
Furthermore,
Respondent’s registration of the <broad-com.com> domain name,
containing Complainant’s well-known BROADCOM mark in its entirety, suggests
that Respondent knew of Complainant’s rights in the BROADCOM mark. There is no evidence to suggest that Respondent
has any connection to any products or services bearing this variation on
Complainant’s BROADCOM mark. Moreover,
constructive knowledge of the mark may be inferred because the mark was
registered with the United States Patent and Trademark Office prior to
Respondent’s registration of the domain name.
Thus, the Panel finds that Respondent registered and used the disputed
domain name based on the distinctive and well-known qualities of Complainant’s
mark. See Kraft Foods (Norway) v.
Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the
Respondent chose to register a well known mark to which he has no connections
or rights indicates that he was in bad faith when registering the domain name
at issue”); see also
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Orange Glo Int’l v. Jeff Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <broad-com.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
April 22, 2005
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