Broadcom Corporation v. Paul DeLand
Claim
Number: FA0503000447319
Complainant is Broadcom Corporation (“Complainant”),
represented by Gary J. Nelson, of Christie, Parker and Hale LLP, 350 West Colorado Boulevard, Suite 500, P.O. Box 7068, Pasadena,
CA 91109-7068. Respondent is Paul DeLand (“Respondent”), 9112 Hwy 80
West, #364, Fort Worth, TX 76116.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <vipbroadcom.com>,
<vipbroadcom.net>, <vipbroadcom.org> and <vipbroadcom.info>,
registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
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 March
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 30, 2005.
On
April 1, 2005, Innerwise, Inc. d/b/a Itsyourdomain.com, confirmed by e-mail to
the National Arbitration Forum that the domain names <vipbroadcom.com>,
<vipbroadcom.net>, <vipbroadcom.org> and
<vipbroadcom.info> are registered with Innerwise, Inc. d/b/a
Itsyourdomain.com, and that Respondent is the current registrant of the
names. Innerwise, Inc. d/b/a
Itsyourdomain.com, has verified that Respondent is bound by the Innerwise, Inc.
d/b/a Itsyourdomain.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
April 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 26, 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@vipbroadcom.com, postmaster@vipbroadcom.net,
postmaster@vipbroadcom.org and postmaster@vipbroadcom.info 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
May 3, 2005, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vipbroadcom.com>,
<vipbroadcom.net>, <vipbroadcom.org> and
<vipbroadcom.info> domain names are confusingly similar to
Complainant’s BROADCOM mark.
2. Respondent does not have any rights or
legitimate interests in the <vipbroadcom.com>,
<vipbroadcom.net>, <vipbroadcom.org> and
<vipbroadcom.info> domain names.
3. Respondent registered and used the <vipbroadcom.com>,
<vipbroadcom.net>, <vipbroadcom.org> and
<vipbroadcom.info> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Broadcom Corporation holds at least five 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 October 10, 2000; Reg. No.
2,326,387, issued March 7, 2000; Reg. No. 2,625,799, issued September 24, 2002;
Reg. No. 2,595,174, issued July 16, 2002).
Complainant has
used the BROADCOM mark in connection with providing highly integrated
semiconductor solutions that enable broadband communications and networking of
voice, video and data services since as early as November 1994. Complainant also designs, develops and
supplies complete system-on-a-chip solutions, incorporating digital, analog and
radio frequency technologies, as well as related hardware and software
system-level applications. Complainant’s
portfolio includes solutions for digital cable and satellite set-top boxes;
high definition television; cable and DSL modems and residential gateways; high
speed transmission and switching for local, metropolitan, wide area and storage
networking, home and wireless networking; cellular and terrestrial wireless
communications; Voice over Internet Protocol gateway and telephony systems;
broadband network processors and system I/O server solutions.
Respondent
registered the <vipbroadcom.com> and <vipbroadcom.net> domain
names on February 25, 2005 and the <vipbroadcom.org> and
<vipbroadcom.info> domain names on February 26, 2005. Respondent is using the disputed domain
names to redirect Internet users to a webpage advertising domain name
registration services.
Respondent’s
registrar provides a service that allows its customers to register domain names
while concealing Respondent’s true identity behind a Registrar-owned company
operating as SecureWhois, Inc. Thus,
the initial information provided in the WHOIS database did not identify the true
owner and host of the contested domain names.
However, the Registrar has subsequently provided the correct ownership
information to the National Arbitration Forum, who in turn has provided that
information to Complainant. However, as
of the date the Amended Complaint was filed, the WHOIS record continues to
identify the incorrect owner of the disputed domain names.
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 through continuous use
of the mark in commerce for the last eleven years. 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).
The
domain names registered by Respondent are confusingly similar to Complainant’s
BROADCOM mark because the domain names incorporate Complainant’s mark in its
entirety and deviate from it by adding the generic or descriptive acronym,
“vip.” The acronym is universally
understood to mean “very important person” and in the high tech industry, it is
understood to mean “variable information processing.” The mere addition of a generic or descriptive acronym to a
registered mark does not negate the confusing similarity of Respondent’s domain
names pursuant to Policy ¶ 4(a)(i). See
Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001)
(finding that the generic term “INC” does not change the confusing similarity);
see also Am. Online Inc. v.
Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition
of the generic word “Net” to Complainant’s ICQ mark, makes the
<neticq.com> domain name confusingly similar to Complainant’s mark); see
also Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of Complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd.,
D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or
generic nouns can rarely be relied upon to differentiate the mark if the other
elements of the domain name comprise a mark or marks in which another party has
rights).
Moreover,
the addition of the generic top-level domains “.com,” “.net,” “.org” or “.info”
is irrelevant in determining whether the disputed domain names are confusingly
similar to Complainant’s BROADCOM mark.
See 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); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Koninklijke Philips Elecs. NV v. Goktas,
D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name
<philips.org> is identical to Complainant’s PHILIPS mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the disputed domain
names. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, it is assumed that Respondent lacks rights and legitimate interests
in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has
no rights or legitimate interests with respect to the domain name it is
incumbent on Respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
rights or legitimate interests is sufficient to shift the burden of proof to
Respondent to demonstrate that such rights or legitimate interests do exist); 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 interests in the domain names).
The Panel may accept
all reasonable allegations and inferences in the Complaint as true because
Respondent has not submitted a response.
See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc.,
FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact in the allegations of the
Complaint to be deemed true); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that Complainant’s allegations are true
unless clearly contradicted by the evidence).
Respondent is
using the disputed domain names to redirect Internet users to a website
containing commercial content; specifically, Respondent’s website offers the
sale of domain name registration services.
The Panel finds Respondent’s use of confusingly similar domain names to
redirect Internet users to a commercial website is not a use in connection with
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). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using Complainant’s mark by redirecting Internet
traffic to its own website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored by Respondent hardly seems legitimate”); see
also State Farm Mut. Auto. Ins. Co.
v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that
“unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or services”);
see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June
20, 2002) (finding that because the VIAGRA mark was clearly well-known at the
time of Respondent’s registration of the domain name it can be inferred that
Respondent is attempting to capitalize on the confusion created by the domain
name’s similarity to the mark).
Furthermore,
Respondent is not commonly known by the disputed domain names, and does not
have Complainant’s authorization to use the BROADCOM mark or offer goods and
services under Complainant’s BROADCOM mark.
Respondent has not presented any evidence and there is no proof in the
record suggesting that Respondent is commonly known by the disputed domain
names. Therefore, Respondent has not
established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
incorporating Complainant’s mark in its domain names to lead Internet users to
a commercial website. The Panel finds
that Respondent is using the domain names to attract Internet users to
Respondent’s website for Respondent’s commercial gain, which constitutes bad
faith pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent); see
also H-D Michigan, Inc. v. Petersons Auto. a/k/a Larry Petersons, FA 135608
(Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was
registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through
Respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using Complainant’s famous marks and likeness); see also G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <vipbroadcom.com>, <vipbroadcom.net>,
<vipbroadcom.org> and <vipbroadcom.info> domain names
be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated:
May 17, 2005
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