Broadcom Corporation v. Arya Web Services
Claim Number: FA0507000523720
PARTIES
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 Arya Web Services (“Respondent”), b/4 Shanti Apt. No. 2, Mumbai, Maharashtra, 400067, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <digitalbroadcom.com>,
registered with Tucows Inc.
PANEL
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.
P-E H Petter Rindforth as
Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 27, 2005.
On
July 26, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the <digitalbroadcom.com>
domain name is registered with Tucows Inc. and that the Respondent is the
current registrant of the name. Tucows
Inc. has verified that Respondent is bound by the Tucows Inc. 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
July 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 16,
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@digitalbroadcom.com by e-mail.
An
untimely Response was received and determined to be complete on August 20, 2005.
An
Additional Submission from the Respondent was received by the Forum on
September 2, 2005. This Additional Submission did not comply with the Forum’s
Supplemental Rule 7 and therefore was not considered by the Panel.
On August 25, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Mr. P-E H Petter Rindforth as Panelist.
Respondent’s
Response was received four days after the prescribed response deadline and was
received in electronic format only. However, Respondent states that they had
encountered communication problems because of a flood, and that, accordingly,
Respondent’s office had to be closed for “more than a week”. As the late
Response was received before a panelist was appointed, this Panel accepts the
alleged reason for the late Response and will consider the same as timely
received. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO
June 22, 2000).
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
states that it is a global leader in highly integrated semiconductors for wired
and wireless broadband communications. Complainant provides computing and
networking equipment, digital entertainment products, mobile devices and
similar products, with software solutions.
Complainant
has customer relationships with a number of companies in the said industry
area, such as Apple, Cisco Systems, Dell, Hewlett-Packard, IBM, Motorola and
Sony Ericsson. The revenue for the year ending 2004 was approximately $2.4
billion.
Complainant
contends that the disputed Domain Name is confusingly similar to Complainant’s
well-known trademark BROADCOM. Complainant further contends that Respondent has
no rights or legitimate interest in the Domain Name.
Finally,
Complainant states that Respondent has registered and is using the disputed
Domain Name in bad faith. The Domain Name is registered with the intention to
divert Internet users, attempting to locate Complainant’s website at <broadcom.com>.
The BROADCOM trademark is so obviously connected with Complainant that the use
as such of the Domain Name suggests bad faith. Complainant argues that
Respondent had constructive knowledge of Complainant’s trademark.
B. Respondent
Respondent
is a domain name reseller and claims to have registered the Domain Name on June
29, 2005 for one of its clients, Saibaba Enterprises. Respondent asserts that
it has “nothing to do” with the Domain Name but that it is unable to change the
WHOIS information. Respondent wants to place the said Saibaba Enterprises as
the holder of the Domain Name.
FINDINGS
Complainant
is the owner of five U.S. Trademark Registrations for BROADCOM (word marks and
design marks), four pending U.S. Trademark Applications and two Indian
Trademark Applications (Nos. 855,367 (BROADCOM) and 877,840 (BROADCOM &
Design)), all predating the contested Domain Name (printouts from databases and
confirmation letters provided as Annex B and C of the Complaint).
The Domain Name
was registered on June 29, 2005 in the name of Arya Web Services (Respondent).
According to
Rule 1 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy
(the “Rules”), “Respondent”
means the holder of a domain-name registration against which a complaint is initiated.
Respondent in this proceeding is therefore Arya Web Services and not Saibaba
Enterprises. See Regal Removals v. Bradshaw, D2003-0832 (WIPO
Feb. 5, 2004) (stating that “the Rules are quite explicit that the Respondent
in a UDRP proceeding is the Registrant of the domain name at issue”).
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.
Complainant is the owner of the BROADCOM trademark.
The
relevant part of the Domain Name is “digitalbroadcom.” “Digital” is a generic
addition, with no distinctiveness. See Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000). The
term “digital” is commonly used in connection with Complainant’s goods and
services (broadband communications, etc).
The
Panel finds that the Domain Name is confusingly similar to Complainant’s
BROADCOM trademark, and accordingly finds for Complainant under Policy ¶
4(a)(i).
It is an undisputed fact that Respondent
is not licensed or authorized by Complainant to use the BROADCOM trademark.
Respondent has no trademark rights to DIGITAL BROADCOM or BROADCOM, nor is
Respondent commonly known by the Domain
Name.
The lack of
rights or legitimate interests are confirmed by Respondent, in its Response,
stating that “we have nothing to do
with this domain.”
The Panel concludes that Respondent has
no rights or legitimate interests in the Domain Name, and finds for Complainant
under Policy ¶ 4(a)(ii).
To
fulfill the third requirement, Complainant must prove that the Domain Name has
been registered and is being used in
bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that
shall be evidence of the registration and use of a domain name in bad faith.
Although
there is no clear and undisputable evidence of any of the circumstances of
Paragraph 4(b) of the Policy, those circumstances are given “in particular and
without limitation.” That is, the Panel
is free to hold that other factors may be evidence of registration and use in
bad faith.
As
stated above, the disputed Domain Name was registered on June 29, 2005
and the Complaint was filed on July
26, 2005. Although the Panel accepts Respondent’s reference to the severe
weather conditions as an acceptable excuse for filing the late Response, this
is no explanation why Respondent a) registered the Domain Name in its own name,
and b) if this was done by mistake, did not made any effort to transfer the
Domain Name to Saibaba Enterprises during the twenty-seven days between the
registration and the filing of the Complaint.
See
also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar.
3, 2000), in which the panel dismissed the respondent’s assertions that it is
not the true owner of the domain names, stating:
For the Administrative
Panel the relevant fact is that the Domain Name registrations are still today
in Respondent’s name. Consequently Respondent is in a position to transfer the
Domain Names, without prejudice if so wished. By refusing to transfer the
Domain Names while at the same time acknowledging that he has no rights or
legitimate interests in them, Respondent knowingly prolongs a situation which
is at odds with the legal rights of the parties involved and knowingly
obstructs the registration of the Domain Names in the name of Complainant and
their subsequent use by Complainant.
Id.
In
fact, the Domain Name is not just registered in Respondent’s own name, but all
contact details on the Registrar’s level refers to Respondent. The Panel is not
convinced that Respondent has made any efforts to register or transfer the
Domain Name to the alleged client, Saibaba Enterprises.
Respondent
is a domain name reseller and has therefore presumably a higher level of
knowledge regarding domain names, registration procedures and the ICANN Rules
than many other commercial domain name holders. By registering the Domain Name
in its own name, Respondent has assumed the same obligations as any other
domain name registrant.
A
legal presumption of bad faith arises when a respondent had constructive
knowledge of a complainant’s trademarks at the time of registration. In this
case, constructive knowledge of Complainant’s rights in BROADCOM may be imputed
to Respondent referring to the fact the BROADCOM trademark has been registered in
the United States since January 27, 1998 and there are pending Indian
applications filed in 1999, well prior to Respondent’s registration of the
disputed Domain Name. See Broadcom Corp. v. Lumacang,
FA 361182 (Nat. Arb. Forum Dec. 23, 2004).
The
Domain Name is linked to a so-called “parking site”, with the usual information
for such websites: “Under construction.
Please check back soon.” However, in this case, the parking site is
extended as it also contain the words “digital BroadCom™ ,” “DBC,” “The HEARTBEAT of HFC
Network,” “Contact: Saibaba Enterprises” as well as telephone and e-mail to the
said company.
Accordingly,
Respondent – presumably in charge and full control of the Domain Name in its
capacity of Registrant, Administrative and Technical Contact – has linked the
Domain Name to a web site using “digital BroadCom” as a trademark, together
with references to other entities that may well be competitors of Complainant.
The Panel concludes that such use, even if it is not listed in particular in Paragraph
4(b) of the Policy, must be considered as use in bad faith.
After carefully weighing all the evidence
available, the Panel holds that Respondent has registered and is using the
disputed Domain Name in bad faith.
The
Panel concludes that Complainant has succeeded in proving the three elements
within paragraph 4(a) of the Policy.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <digitalbroadcom.com>
domain name be TRANSFERRED from Respondent to Complainant.
P-E H Petter Rindforth, Panelist
Dated: September 8, 2005
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