DECISION

 

Broadcom Corporation  v. Danny Juwon Lee

Claim Number: FA0107000098071

 

PARTIES

Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J Nelson, of Christie, Parker & Hale LLP.  Respondent is Danny Juwon Lee, Glendale, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <antibroadcom.com> and <blutonium.com>, registered with Network Solutions, Inc.

 

PANEL

On August 17, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 13, 2001; the Forum received a hard copy of the Complaint on July 16, 2001.

 

On July 23, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <antibroadcom.com> and <blutonium.com> are 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, Inc. 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 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 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@antibroadcom.com and postmaster@blutonium.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 Forum transmitted to the parties a Notification of Respondent Default.

 

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 names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that:

1.      the <antibroadcom.com> domain name is confusingly similar to its BROADCOM mark;

2.      the <blutonium.com> domain name is identical to its BLUTONIUM mark;

3.      Respondent has no rights or legitimate interests in either domain name; and

4.      Respondent registered and is using both disputed domain names in bad faith.

 

B. Respondent

Respondent did not submit a response.

 

FINDINGS

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

2.      Complainant provides highly integrated silicon solutions that enable broadband digital transmission of voice, video, and data and enjoys a significant market share in cable modems, digital set-top boxes, residential broadband gateways, high-speed home networking and Fast Ethernet networking, and provides key technology and products in emerging broadband markets such as digital subscriber line (DSL), fixed wireless, direct broadcast satellite and terrestrial digital broadcast. 

3.      Complainant has at least three registered United States trademarks and five United States trademark applications pending for numerous variations of its BROADCOM trademark (the “BROADCOM trademark”).

4.      Complainant has been the substantially exclusive user of its BROADCOM trademark in the United States beginning at least as early as November 1994, and has been using the mark continuously ever since.

5.      Complainant has recently acquired Innovent Systems, Inc. (“Innovent”).  Prior to the acquisition, Innovent launched an advertising campaign for its Bluetooth products, which are low cost, radio-based cable replacement technology for personal area network applications; BLUTONIUM is the trademark associated with these products. 

6.      Complainant has been the substantially exclusive user of its BLUTONIUM trademark in the United States beginning at least as early as June 5, 2000, and has been using the mark continuously ever since.

7.      Complainant has a pending application with the United States Patent and Trademark Office for its BLUTONIUM mark.

8.      Respondent registered the <antibroadcom.com>  and <blutonium.com> domain names on June 13, 2000.

9.      Respondent has not used either the <antibroadcom.com>  nor the <blutonium.com> domain names in any manner.

10.  The disputed domain names were registered 8 days after Innovent's announcement of its new product with the BLUTONIUM mark.

 

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

For the purposes of Policy ¶ 4(a)(i), Complainant has established its rights to the BROADCOM and BLUTONIUM marks through its long and continuous use as well as its federal registrations and applications for registration. 

 

The Panel agrees with Complainant's assertion that the <antibroadcom.com> domain name is confusingly similar to Complainant's BROADCOM mark.  Complainant's mark is incorporated into the <antibroadcom.com> domain name and is the dominant feature of the domain name.  Respondent cannot escape a finding of confusing similarity by adding the generic "anti" prefix to Complainant's mark.  See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).

 

The <blutonium.com> domain name is identical to Complainant's BLUTONIUM mark.  It is well established that the addition of ".com" or any other TLD is without significance when making determining whether a domain name is identical to a mark.  E.g., Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is likewise without legal significance since use of a gTLD is required of domain name registrants").

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to file a response that would refute Complainant's allegations that Respondent lacks any rights or legitimate interests in either domain name.  The Panel therefore accepts Complainant's assertions as true with regard to Policy ¶ 4(a)(ii).  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

 

Moreover, Respondent is passively holding both the <antibroadcom.com> domain name and the <blutonium.com> domain name.  This lack of use is further evidence that Respondent lacks any rights or legitimate interests in either domain name.  E.g., Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).

 

For the forgoing reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Complainant provides several allegations of Respondent's bad faith registration and use that Respondent fails to dispute.  First, Respondent registered the disputed domain names within days of Complainant's predecessor's announcement of the new product bearing the BLUTONIUM mark.  In light of the Respondent's lack of interest in the <antibroadcom.com>  and <blutonium.com> domain names, the timing of Respondent's registration creates a presumption of bad faith registration.  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”); cf. Cellular One Group v. Brien, D2000-28 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name).

 

Second, Complainant's reputation within the broadband industry is so prominent that Respondent had to be on notice of Complainant's BROADCOM mark.  Registration of a domain name that infringes on another's mark amounts to bad faith within the meaning of Policy ¶ 4(a)(iii).  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); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

 

And finally, Respondent is passively holding the <antibroadcom.com>  and <blutonium.com> domain names.  There is ample authority for the finding that a Respondent is using disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii) where the Respondent is not using the names at all.  E.g., Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

 

The Complainant has met its burden under Policy ¶ 4(a)(iii).

 

DECISION

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

 

Accordingly, it is Ordered that the <antibroadcom.com>  and <blutonium.com> domain names be transferred from Respondent to Complainant.

 

 

James P. Buchele, Panelist

 

Dated August 21, 2001

 

 

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