DECISION

 

Broadcom Corporation v. Broadband Communication Networks LLC

Claim Number: FA0107000097871

 

PARTIES

Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is Broadband Communication Networks LLC, Chandler, AZ (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <broadcomnet.net>, registered with Network Solutions, 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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 9, 2001; the Forum received a hard copy of the Complaint on July 9, 2001.

 

On July 10, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <broadcomnet.net> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions 5.0 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 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 2001 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@broadcomnet.net by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On August 1, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent's <broadcomnet.net> domain name is confusingly similar to its federally registered BROADCOM trademark.  Complainant further contends that Respondent has no rights or legitimate interests in the <broadcomnet.net> domain name, and finally, that Respondent registered and is using the <broadcomnet.net> domain name in bad faith.

 

B. Respondent

Respondent did not submit a response.

 

FINDINGS

1.      Complainant is a leading provider of integrated circuits, computer hardware and software, and related services in the field of digital broadband communications.

2.      Complainant uses its BROADCOM mark to advertise, describe, and promote all its products and services.

3.      Complainant has used its BROADCOM mark since November 1994.

4.      Complainant holds at least three registrations of the BROADCOM trademark with the United States Patent and Trademark Office. 

5.      All three registered trademarks predate Respondent's registration of the disputed domain name.

6.      Respondent registered the <broadcomnet.net> domain name on April 24, 2001.

7.      Respondent is not using the <broadcomnet.net> domain name in any manner.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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.

 

Identical and/or Confusingly Similar

Complainant has established its rights in the BROADCOM mark through its multiple federal trademark registrations.  The <broadcomnet.net> domain name combines Complainant's trademark with the generic descriptive term "net."  Domain names that incorporate another's trademark and merely add a generic descriptor are still confusingly similar for the purposes of Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).

 

The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the <broadcomnet.net> domain name.  Respondent has failed to come forward to dispute that assertion.  The Panel is permitted to consider Complainant's allegations as true in the absence of a response.  E.g., Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (Failure to respond allows presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

 

Complainant contends that Respondent is squatting on the disputed domain name and that such a use does not constitute a bona fide offering of goods or services as provided under Policy ¶ 4(c)(i).  See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

 

Complainant further claims that Respondent cannot be commonly known by the <broadcomnet.net> domain name, nor can Respondent establish legitimate or fair use of the domain name pusuant to Policy ¶ 4(c)(ii) and (iii) when Respondent is commonly known by its actual business name, Broadband Communications Network, and when Respondent is not a licensee of Complainant's, and when Complainant has prior trademark rights in the BROADCOM mark.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

 

In light of the above, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Complainant asserts, and Respondent fails to refute, that Respondent's registration and passive holding of the <broadcomnet.net> domain name are in bad faith.  Given the notoriety of Complainant's BROADCOM mark within its field, the use of the disputed domain name without a connection to Complainant suggests bad faith.  See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

 

Additionally, there is ample authority to support the finding that passive holding of an infringing domain name is evidence of bad faith.  See, e.g., 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).

 

Accordingly, the Panel concludes that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <broadcomnet.net> domain name be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: August 3, 2001