Broadcom
Corporation v. Michael Becker
Claim Number: FA0108000098819
PARTIES
The Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale, LLP. The Respondent is Michael Becker, Goose Creek, SC (“Respondent”) Joseph F. Hand, Jr., of Ortner Law Firm, LLC.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <cyberbroadcomm.com>, registered with Go Daddy Software, 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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 8, 2001; the Forum received a hard copy of the Complaint on August 8, 2001.
On August 8, 2001, the Respondent sent an E-Mail to the Forum regarding the Complaint. In that E-Mail the Respondent offers to transfer the domain name to the Complainant at no cost.
On August 9, 2001, the Forum forwarded to the Complainant the Respondent’s E-Mail of August 8, 2001, stating:
We have received indications that the Respondent in the complaint referenced above may be willing to transfer the domain name.
It has been our experience that some parties prefer to settle their domain name disputes when such an offer is made rather than deferring to the outcome of a Panel decision. If you would like time to pursue a settlement, you may request a one-time Stay of Administrative Proceeding …
On August 14, 2001, the Forum received an additional submission from the Complainant, in accordance with the Forum’s Supplemental Rule no. 7. This additional submission was timely. In this submission, the Complainant acknowledged receipt of the Respondent’s E-Mail of August 8, 2001, and of the Respondent’s offer to transfer the domain name. But the Complainant did not accept that offer or request a stay of the proceedings and thus, by its actions resulting in the continuation of the proceedings, rejected the offer.
On August 16, 2001, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <cyberbroadcomm.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 August 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 5, 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@cyberbroadcomm.com by e-mail.
On September 4, 2001, the Forum received from the Respondent a Request for Extension of Time to Respond to Complaint without Complainant’s Consent. The Respondent alleged that it had made numerous attempts to contact counsel for the Complainant, and succeeded only on September 4, whereupon counsel for the Complainant declined to consent to an extension. Having satisfied the provisions of Rule 6(a)(i) of the Forum’s Supplemental Rules (which oblige the Respondent to confer with the Complainant before requesting an extension), the Respondent requested an extension, pleading that counsel for the Respondent had only just been appointed.
On September 5, 2001, the Forum found that extenuating circumstances existed to warrant an extension and granted Respondent an extension until September 25, 2001 to prepare a Response. When making this decision, the Forum noted Complainant’s opposition to the request for an extension and noted that the Complainant had not submitted information in support of its opposition.
On September 6, 2001, the Forum received from the Complainant an Objection to the Granting of Respondent’s Request for an Extension of Time to Respond to Complaint and Request for Entry of Default against Respondent. The Complainant stated that, when filing its extension request, Respondent did not serve a copy of the request on Complainant as required by the Forum’s Supplemental Rule 6(a)(ii). Complainant stated that this failure prevented it from filing with the Forum its objections to the request for extension.
A timely response was received and determined to be complete on September 25, 2001.
On September 28, 2001, the Forum received an additional submission from the Complainant, in accordance with the Forum’s Supplemental Rule no. 7. This additional submission was timely.
On
October 11, 2001, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum
appointed Richard Hill as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The Respondent requests that the Panel denies the remedy requested by the Complainant. Additionally, Respondent requests that Panel find that Complainant engaged in reverse domain-name hijacking and Respondent prays for attorney fees and reasonable costs that Respondent suffered in defending the action.
PARTIES’ CONTENTIONS
A. Complainant
Respondent filed a request for an extension of time to
respond to the Complaint pursuant to the Forum’s Supplemental Rule no. 6. But, argues the Complainant, the Respondent
did not serve a copy of the request on Complainant as required by Supplemental
Rule 6(a)(ii). Therefore the
Complainant argues that the Forum’s granting of an extension was invalid,
because in violation of Supplemental Rule 6(b). Finally, the Complainant argues that the time granted to
Respondent to reply was excessive.
Because of the above, the Complainant argues that the
extension should be declared invalid, that the Response should not be admitted,
and that default should be entered against the Respondent.
The Complainant states:
Complainant Broadcom Corporation (Broadcom) has at least
three registered United States trademarks and five United States trademark
applications pending for numerous variations of its BROADCOM trademark (the
BROADCOM trademarks). See itemized
list in Section 4C…. Broadcom began
using its BROADCOM trademark at least as early as November 1994 and has been
using the mark continuously ever since its initial adoption.
Broadcom is a leading provider of integrated circuits,
computer hardware and software in the field of digital broadband
communications. Broadcom provides
highly integrated silicon solutions that enable broadband digital transmission
of voice, video, and data.
Broadcom has 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. Broadcom has strategic
customer relationships with 3Com, Nortel‑Bay, Cisco Systems,
Motorola/General Instrument and Scientific‑Atlanta.
…
In the field of digital high tech broadband communications,
Broadcom and its BROADCOM trademark are well known.
Confusingly Similar
The
Complainant states:
Respondent’s registered domain name, <cyberbroadcomm.com>, is confusingly similar to the registered BROADCOM trademarks. The BROADCOMM portion of the domain name and the BROADCOM trademarks is nearly identical, the pronunciation is nearly identical, and the connotation and commercial impression are nearly identical. Moreover, Respondent cannot avoid the confusing similarity between its registered domain name and the BROADCOM trademarks simply by tagging on a generic prefix such as ‘cyber.’ See Broadcom Corp. v. Broadband Communication Networks, LLC, FA 97871 (Nat. Arb. Forum Aug. 3, 2001) (“domain names that incorporate another’s trademark and merely add a generic descriptor are still confusingly similar for the purposes of Policy par. 4(a)(i)”); Space Imaging LLC v. Brownwell, AF0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combined the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).
Respondent Has No Rights or
Legitimate Interest in the Contested Domain Name
The Complainant states:
Respondent has made no demonstrable preparations to use the
domain name, or a name corresponding to the domain name, in connection with a
legitimate and bona fide offering of goods or services. See Exhibit B (copy of Respondent’s
corresponding web site indicating the domain name is for sale). Rather, Respondent is merely squatting on
the domain name. See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb.
19, 2001) (finding no rights or legitimate interests in the contested domain
name where Respondent was merely passively holding the domain name). Indeed, any actual use by Respondent of the
contested domain name would be an infringement of Broadcom’s rights in its
famous and well known BROADCOM trademarks.
See Household Int’l, Inc. v.
Cyntom Enterprises, FA 95784 (Nat. Arb. Forum Nov. 7, 2000)(finding that
use of someone else’s well-known business name undermines any claims to a
legitimate interest).
The Complainant states:
Respondent has intentionally registered the <cyberbroadcomm.com>
domain name to prevent Broadcom from using its BROADCOM trademark in a
corresponding domain name that correctly suggests the significant presence of
Broadcom on the Internet.
The fact that Respondent is continuing to passively hold
the <cyberbroadcomm.com> domain name is evidence of bad
faith. See Northwest Racing Assoc.
Ltd. Partnership v. Quantu Mktg., FA 95506 (Nat. Arb. Forum Oct. 6, 2000)
(passive holding of <emeralddowns.com> found to be evidence of bad
faith). See also Yanni Mgmt., Inc.
v. Progressive Indus., FA 95063 (Nat. Arb. Forum Aug. 2, 2000)
(Respondent’s passive use of <yanni.com> was evidence of bad faith); CMG
Worldwide, Inc. v. Alessandro Bottai, FA 94661 (Nat. Arb. Forum May 31,
2000) (same).
The issue of passively holding a domain name that utilizes
a third party’s well-known trademark was addressed in one of WIPO’s first
written opinions. See Telstra
Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO) (holding
that the mere passive holding of a domain name that corresponds to well-known
trademark satisfies the requirement of Uniform Dispute Resolution Policy
paragraph 4(a)(iii) that the domain name is being used in bad faith). In Telstra, the Administrative Panel
expressly found that when a well-known trademark is at issue, a finding of bad
faith is supported by the fact that it is not possible to conceive of any
plausible actual or contemplated active use of the domain name by the
Respondent that would not be illegitimate, such as by being a passing off, an
infringement of consumer protection legislation, or an infringement of the
Complainant’s rights under trademark law.
Just as in Telstra, there can be no actual legitimate use of <cyberbroadcomm.com>
by Respondent because of the well-known and famous nature of Complainant’s
registered BROADCOM trademarks.
Accordingly, the act of merely squatting on the contested domain name
supports a finding that Respondent registered and is using the contested domain
name in bad faith.
B. Respondent
In his sworn and notarized affidavit, the Respondent Michael Becker states:
I had never heard of the Broadcom Corporation until I was served a complaint by said corporation for a disputed over the above-referenced domain name. I was never aware of Broadcom’s existence, trademark rights, or the trademark rights of any other party. As well, I have never had any contact with the Broadcom Corporation until they served me with said complaint. I have no technical knowledge or training in any of the goods or services provided by the Broadcom Corporation and I never intended to provide any such good or service to anyone.
…
I offered, in good faith and for no money, to transfer the disputed domain name to Broadcom. Broadcom rejected my offer and decided to press on with the legal dispute for no apparent reason. I really felt I did nothing wrong, so I consulted an attorney to advise me on my rights to <cyberbroadcomm.com> since it seems to be a good, generic name for an online novelty store.
The Respondent states:
Complainant does not have a registered United States trademark identical to Respondent’s registered domain name, <Cyberbroadcomm.com>. Therefore, Complainant must prove that Respondent’s registered domain name, <Cyberbroadcomm.com>, is confusingly similar to a trademark or service mark in which the Complainant has rights.
…
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy instructs the 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.” This suggests that the Panel will look at applicable law in order to define standards for The Rules. Accordingly, applicable law dictates that in order to find a mark is confusingly similar it must create a likelihood of confusion, mistake and/or deception with the consuming public.
The Respondent goes on to invoke the US Lanham Act of the Trademark statute (15 U.S.C. 1052) and to analyze the issue of confusion from the point of view of that statute.
It also argues that the phonetic similarity between the disputed domain name and the trademark BROADCOM is weak and that there is no confusion possible because there are no mutual goods and services provided under the denominations in question (because the Respondent did not intend to offer goods or services in the same category as those of the Complainant).
Finally, the Respondent states:
When taken as a whole, the differences in both the names and goods offered are so substantial that any reasonable consumer would not and could not be confused.
Respondent’s
reasons why it should be considered as having rights or legitimate interests to
<cyberbroadcomm.com>
Respondent states:
Respondent registered the disputed domain name with the intent to use the domain name in connection with a legitimate business. Therefore, Respondent has a legitimate interest in the domain name. Respondent can have “rights and legitimate interests in the domain name even though he has made no use of the web site at the time of the Complaint[.]” CHF Indus., Inc. v. Domain Deluxe, FA 97532 (Nat. Arb. Forum July 26, 2001). See also Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000). Respondent believed that the words ‘broad’, ‘cyber’ and ‘comm’ were all generic enough to provide a decent name for a website from which to start a new retail, online, novelty-goods store for which Respondent is licensed.
…
Furthermore, Respondent did not have any prior relation with Complainant and, more importantly, at the time Respondent registered the disputed domain name, Respondent had no knowledge of Complainant’s existence. Respondent only became aware of the existence of the Broadcom Corporation when Respondent was put on notice that Complainant was filing a complaint with the Forum. Respondent believed that it registered a generic domain name with no matching trademarks and with a good faith, reasonable belief that it had rights and legitimate interests in and to <Cyberbroadcomm.com>. Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where domain name was comprised of generic and/or descriptive terms and was not exclusively associated with Complainant’s business). This shows Respondent had rights and legitimate interests in <Cyberbroadcomm.com>, especially since said name is descriptive and not exclusively associated with Complainant’s goods, services or business.
…
… merely putting a domain name “up for sale” at an online auction is a legitimate use of said domain name. As well, simply because Respondent was trying to earn supplemental income through an online store using the disputed domain name or by selling it at auction does not mean Respondent is making an illegitimate use of the name as hereinbefore discussed.
Respondent’s
reasons why <Cyberbroadcomm.com>
should not be considered as having been registered and being used in bad faith
Respondent states:
… Respondent’s initial reasoning and intention for registering said domain name was that Respondent believed and still believes that <cyberbroadcomm.com> is simply a name indicative of a broad array of gifts to be sold online. Respondent did not and could not have intended to sell the domain name to or profit from Complainant since Respondent had no knowledge that Complainant existed until the complaint in this action was filed.
…
Respondent is not merely passively holding said domain name but is actively considering using it for his online store. Respondent has a reasonable belief that it is using this name for a fair, lawful and legitimate purpose.
…
Alternatively, Complainant rebuts his own allegation of bad faith through passive holding where it claims Respondent put the disputed domain name up for auction. Since Respondent made a legitimate use of the domain name <cyberbroadcomm.com> by putting it up for auction while deciding whether to use said name for an online store, then Respondent was not passively holding it.
Respondent disputes Complainant’s statements that the Broadcom mark is well-known, famous, fanciful or arbitrary. Respondent contends that said mark is merely comprised of the generic terms “broad” and “com”. Complainant submitted no evidence to establish that its trademark is so well-known or famous that consumers are likely to associate the disputed <Cyberbroadcomm.com> domain name only with Complainant Corporation. In General Machine Prod. Co. Inc. v. Prime Domains (a/k/a Telepathy, Inc.) FA 92531 (Nat. Arb. Forum Mar. 16, 2000), the Forum found no bad faith where Complainant submitted no evidence that its mark is so famous that consumers are likely to only associate the disputed domain name with its mark and where respondent was not aware of Complainant’s or any other party’s trademark rights. Complainant merely stated throughout its complaint that its mark is well known and established no evidentiary basis upon which it claims said fame. Respondent has never heard of the Complainant Corporation before this complaint was served upon him.
Reverse Domain Name Hijacking
The Respondent states:
Complainant brought this complaint in bad faith in a manner that would amount to an abuse of this administrative proceeding. As hereinbefore discussed, and shown by the Complainant itself, Respondent offered to give the domain name over to Complainant in order to avoid such legal proceedings. Please see Exhibit A to Complainant’s Submission of Additional Written Statement. Complainant declined Respondent’s offer and decided to press on with this case seeking a remedy identical to Respondent’s offer. Respondent knows that Complainant believes this is the “cheapest way” to get a domain name transferred. Likewise, this shows that Complainant continued this action to harass Respondent. Complainant has engaged in a pattern of conduct of using the Forum to transfer domain names as shown by the Broadcom Cases cited in Complainant’s Complaint which were won by default. This tends to show an abuse of the administrative proceeding when taken together with Complainant’s denial of Respondent’s offer. There was no reason to waste the time, money and effort expended by both parties and the Forum to continue this proceeding.
C. Additional Submissions
Complainant states:
In response to Complainant’s Complaint, Respondent sent an e-mail to the National Arbitration Forum on August 9, 2001. In the e-mail, Respondent admits that he originally registered the <cyberbroadcomm.com> domain name with the intent to sell it for profit. Specifically, Respondent stated:
“Originally, when I registered those domain names, I was trying to earn a supplemental income…” (A copy of Respondent’s e-mail is attached hereto as Exhibit A).
Moreover, Respondent further admits that he has placed the <cyberbroadcomm.com> domain “up for sale” at afternic.com. See Exhibit A.
These actions are evidence that Respondent has no legitimate right or interest in the <cyberbroadcomm.com> domain name, and are a direct violation of Uniform Domain Name Dispute Resolution Policy, para. 4(c)(iii). These same actions are evidence of bad faith and are a direct violation of the Uniform Domain Name Dispute Resolution Policy, para. 4(b)(i).
Finally, Respondent has indicated that he is willing to transfer the <cyberbroadcomm.com> domain name to Complainant. Such willingness has been held as an indication that a Respondent has no legitimate rights in the contested domain name. Broadcom Corp. v. Corporategamer.com, FA 96355 (Nat. Arb. Forum Feb. 12, 2001) (“Respondent’s willingness to transfer the domain name in question also indicates no rights or legitimate interests in the domain name”).
…
In an attempt to claim a legitimate right in the <cyberbroadcomm.com> domain name, Respondent asserts that the contested domain name is a good descriptive name for a business that conducts the sale of novelty items via a virtual on-line store. … Such an assertion is illogical. There is nothing about cyberbroadcomm that suggests a retail source of goods that are offered for sale via the Internet.
Remarkably, Respondent asserts that his attempt to sell the <cyberbroadcomm.com> domain name for US$ 25,000 is evidence that he has a legitimate right in the contested domain name. … Contrary to Respondent’s assertion, the attempt to extort $25,000 for a domain name that is confusingly similar to the BROADCOM trademark is evidence of bad faith.
FINDINGS
The Complainant operates a web site at www.broadcom.com.
The Complainant has provided ample evidence that it has rights to various trademarks containing the character string “broadcom”.
However, the Complainant has not provided any evidence that its trademark is famous or indeed widely known outside of the rather specialized area in which it operates (high-technology network equipment). In particular, the Complainant has not provided any evidence to show that its trademark is known to the general public. Indeed, the Complainant states:
Broadcom is a leading provider of integrated circuits,
computer hardware and software in the field of digital broadband
communications. Broadcom provides
highly integrated silicon solutions that enable broadband digital transmission
of voice, video, and data. …. Broadcom
has strategic customer relationships with 3Com, Nortel‑Bay, Cisco
Systems, Motorola/General Instrument and Scientific‑Atlanta.
…
In the field of digital high tech broadband communications, Broadcom and its BROADCOM trademark are well known.
[emphasis added]
The Complainant acknowledges receipt, via the Forum, of an E-Mail dated August 8, 2001 from the Respondent in which the Respondent states:
… if Broadcom Corpororation think I infringed upon their trademark, I am willing to delete ALL three of the above domain names [including the contested domain name <cyberbroadcomm.com>]. I do not know which one of the domain names is in question.
…
I will, upon your say-so, delete the above domain names.
…
Please be understanding and convey to the Broadcom Corporation the contents of this email. I am not a cruel person and I would never try to take over someone’s trademark.
…
Please let me know and I will delete the above domain names just to keep peace.
…
However, to keep peace, I will delete the above domain names upon your say-so.
By choosing to continue the proceedings without otherwise replying to the Respondent’s offer to relinquish the disputed domain name, the Complainant rejected the Respondent’s offer.
The Respondent acknowledges having posted the disputed domain name on the afternic.com site, with the intent of selling it. This was an at-large offer to sell, not an offer to sell to the Complainant in particular.
DISCUSSION
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution (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.
Before addressing the substantive issues, the Panel must rule on the procedural issues raised by the Respondent, in particular the Respondent’s request to declare invalid the extension granted for filing of the Response.
Procedural
Issues
Paragraph 10(d) of the Rules states:
The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
Paragraph 12 of the Rules states:
In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.
Paragraph 14(a) of the Rules states:
In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
Paragraph 15(a) of the Rules states:
A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable [emphasis added]
Paragraph 15(a) does not impose on the Panel the duty to decide a complaint only on the basis of statements and documents submitted in accordance with the Rules and any applicable Supplemental Rules. On the contrary, Paragraph 15(a) instructs the Panel to decide “on the basis of statements and documents submitted”.
Paragraphs 10(d) and 12 grant broad powers to the Panel to decide on the admissibility of evidence and to request further statements or documents. Paragraph 14(a) empowers the Panel to allow late filings in case of exceptional circumstances.
Similarly, the Forum’s Supplemental Rule no. 6(b) states:
The Forum may exercise its discretion in determining whether exceptional circumstances exist warranting an extension and if so, the length of the extension. …
As noted above, on September 5, 2001, the Forum did exercise such discretion and granted an extension to Respondent for the filing of the Response.
The Panel has no reason to question the Forum’s decision in this respect: indeed the Complainant has not provided any new information that could induce the Panel to question the propriety of the Forum’s decision.
The Complainant does state that it was unable to file its objections to the Respondent’s request for an extension because the Respondent failed to send it a copy of its extension request, in violation of the Forum’s Supplemental Rules. But this is a purely formal argument, developed after the Forum’s grant of the extension.
The only substantive argument provided by the Complainant is:
… the Respondent’s new attorney had over a week to prepare its Response (e.g. at least eight days). Complainant was first contacted by Respondent’s attorney on August 28, 2001.
The Panel notes that eight days is not an adequate period of time to permit a new attorney to familiarize him or herself with the case and to prepare a reply. Indeed, the period of time provided for preparation of the Response by Paragraph 5(a) of the Rules is twenty days.
Furthermore, in the present case, the Panel finds that the lack of reply by the Complainant to the Respondent’s offer to relinquish the disputed domain name constitutes an exceptional circumstance. The Complainant has not explained why it did not simply accept the Respondent’s offer, instead of continuing with the proceedings. Under the circumstances, the Panel understands why the Respondent did not immediately contact an attorney until late in August, too late to permit the attorney to prepare a Response within the initial deadline.
The Panel is also willing to make allowances for the Respondent’s failure to comply strictly with the Forum’s rules regarding notification, because the Respondent did confer with the Complainant on September 4, 2001 regarding the extension. So the Complainant knew as of September 4, 2001 that the Respondent was going to request an extension and could have made its objections known to the Forum, or, alternatively, informed the Forum that it wished to be heard before any extension was granted to the Respondent.
Finally, the Panel finds that the Complainant’s filing of an Additional Response on September 28, 2001 constitutes a waiver of its previous request that the Respondent’s Response be declared inadmissible. Indeed, the Additional Response of September 28, 2001 does not reiterate the request that the Respondent’s Response be declared inadmissible. Furthermore, the Additional Response of September 28, 2001 makes explicit reference to the Response, and it does not do so conditionally. That is, Complainant’s Additional Response of September 28 is not couched as a conditional brief, to be accepted only if the Panel rules the Response admissible.
Clearly the Panel cannot consider the Complainant’s Additional Response of September 28 unless it also considers the Respondent’s Response.
If the Panel were to rule that the Response is not admissible, then the Complainant’s Additional Response of September 28 would also have be ruled inadmissible.
But the Complainant has explicitly requested, by paying the additional filing fee of $250 to the Forum in accordance with Supplemental Rule no. 7(b)(ii), that the Additional Response of September 28 be considered.
The Panel therefore rules that it will admit into the record all of the writings submitted, including the Respondent’s Response and both Additional Responses filed by the Complainant.
Identical and/or
Confusingly Similar
The Complainant has established clearly that it holds rights to the registered trademark BROADCOM.
The Respondent is under the mistaken impression that this Panel is bound by US trademark law when determining the issue of confusing similarity. Such is not the case. Indeed Paragraph 15(a) of the Policy requires the Panel to:
decide a complaint on the basis of … these Rules and any rules and principles of law that it deems applicable.
That is, the Panel has broad latitude to adopt whatever criterion for confusion that it considers appropriate.
Panels have consistently held that strict application of the confusion criteria arising out of national trademark laws is not appropriate, and that a broader notion of confusion should be used in these proceedings.
This principle is well stated in WIPO case D2000-0047 <eautolamps.com>:
When a domain name incorporates, in its entirety, a
distinctive mark, that creates sufficient similarity between the mark and the
domain name to render it confusingly similar. Accordingly, the Panel holds that
Complainant has satisfied the first prong of the ICANN test.
Furthermore it is clear the mere addition of letters or words to a trademark does not create a distinct mark and results in a domain name that is confusingly similar to the mark in question. See for example the Forum’s case FA0095762 <victoriasecret.com>; WIPO case D2001-0026 <guinessguide.com> (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); and WIPO case D2000-1214 <bodyshopdigital.com> (finding that the domain name <bodyshopdigital.com> is confusingly similar to the Complainant’s THE BODY SHOP trademark).
The Panel therefore finds that the Complainant has met its burden of proof and finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Rights or
Legitimate Interests
In response to the Complainant’s allegation that the Respondent has made no demonstrable preparations to use the domain name, the Respondent replies that he intended “to use the disputed domain name in connection with an online retail store for which I have a license” (Respondent’s Exhibit D). But the license referred to is for a business called “shophere4giftscom” (Respondent’s Exhibit B). The Respondent has not even attempted to explain how the name “shophere4gifts” can be logically transformed into “cyberbroadcomm”.
Thus the Panel finds that the Respondent has not presented, in this manner, convincing evidence of the demonstrable preparations for use required to invoke Paragraph 4(c)(i) of the Policy.
However, the Respondent has made actual use of the disputed domain name by offering it for sale on the afternic.com site. The Complainant argues that such use is proof of the Respondent’s bad faith. The Respondent argues that such use is legitimate because he never heard of the Complainant before these proceedings were initiated.
It cannot be doubted that the sale of a domain name constitutes use in the sense of the Policy. See WIPO Case D1999-0001, <worldwrestlingfederation.com>.
The question that this panel has to answer is whether the registration and sale of a domain name can be a legitimate use in the sense of the Policy. According to this Panel:
a) The answer is clearly “yes” if the domain name is a generic name (composed of common words) and is not being used in violation of anybody’s trademark.
b) The answer is clearly “no” when the domain name is a famous trademark.
c) The answer is less clear when, as in the present case, the domain name is similar to a trademark, but the trademark is not well-known or is a common word or composed of common words.
Numerous cases can be cited in support of a) above, for example the Forum’s case FA 98242 <registername.com > and WIPO case D2000-0016 <allocation.com> in which the Panel stated:
Respondent
has registered over 400 domain names, all of which contain or are composed of
common words or short phrases from the English language or misspellings of such
words. In trademark terms, many of these domain names would be considered
descriptive of certain goods or services, or generic. Registration of
descriptive or generic terms as a domain name is possible under the .com TLD.
As the commercial value of such domain names has increased, brokers like
Respondent have seized the opportunity to sell such domain names to the highest
bidder. In principle, such a practice may constitute use of the domain name in
connection with a bona fide offering of goods or services (i.e. the sale of the
domain name itself).
…
…
although the registration and offering for sale of allocation.com as a domain
name may constitute a legitimate interest of Respondent in the domain name,
this is different if it were shown that allocation.com has been chosen with the
intent to profit from or otherwise abuse Complainant’s trademark rights.
…
The
fact that, as Complainant has shown, a number of other domain names registered
by Respondent are identical to different national trademarks from different
owners is in itself insufficient evidence of the intent to profit from or
otherwise abuse such trademark rights. After all, this is to be expected, in
view of the territorial nature of trademark rights and the fact that, as set
out above, terms which are descriptive or generic for particular goods or
services and/or in a particular country may be considered valid trademarks for
other goods and services and/or in a country with a different language.
Complainant
has not provided any evidence of facts which might indicate that Respondent
knew or should have known of its trade name use or trademark registrations,
such as a direct relationship or a wide reputation of or extensive publicity in
connection with Complainant’s trade name or trademarks. Nor has it been shown
that Respondent is in particular (also) active in the German market.
Numerous cases can be cited in support of b) above, for example the Forum’s case FA 99672 <shopcompaq.com> in which the Panel stated: “Given the uniqueness of Complainant’s mark COMPAQ, there is no plausible explanation for Respondent’s registration of the domain name <shopcompaq.com> other than to trade on the goodwill of the COMPAQ name.” and WIPO case D2001-1003 <ferrari-shop.com> in which the Panel stated: “There seems to be no way, Respondent may not have been aware of the trademark FERRARI given its widespread use and fame. … Respondent cannot have ignored Complainant's trademark at the time of registration and has failed to provide evidence of any good faith use of the disputed Domain Name.”
Numerous cases can also be cited to support both answers to c) above. For a good discussion of both sides of the issue, see respectively the majority and minority decisions in WIPO case D2000-0054 <crew.com>.
But fundamentally, as the Panel stated in WIPO case D2000-0638 <manchesterairport.com>:
… selling a domain name is not per se prohibited by
the ICANN Policy (nor is it illegal or even, in a capitalist system, ethically
reprehensible).
The same approach is taken in the Forum’s case FA 92531 <craftwork.com>, where the Panel stated:
General
Machines [the Complainant] has not proven, however, that Prime Domains [the
Respondent] has no legitimate interests in respect of the domain name
craftwork.com. General Machines' trademark is not fanciful or arbitrary, and
General Machines has submitted no evidence to establish either fame or strong
secondary meaning in its mark such that consumers are likely to associate
craftwork.com only with General Machines. As Prime Domains has demonstrated,
the term "craftwork" is in widespread use in a descriptive sense. The
Panel finds therefore that Prime Domains has rebutted General Machines'
arguments and has proven that it is in the business of selling generic and
descriptive domain names such as craftwork.com. As a result, Prime Domains does
have a legitimate interest in the domain name. That Prime Domains has offered
to sell this descriptive, non-source identifying domain name does not make its
interest illegitimate.
Nor
has General Machine shown that Prime Domains acted in bad faith. The affidavit
of Prime Domains' president states that Prime Domains was not aware of General
Machines' (or any other party's) trademark rights at the time it registered the
domain name craftwork.com. Prime Domains chose to register this domain name
because, like its other domain name registrations, it was descriptive of a
service that could be offered under that domain name. Prime Domains did not seek
to sell the domain name to General Machines; rather, General Machines solicited
the offer to sell using an anonymous agent. These facts do not indicate any bad
faith on the part of Prime Domains.
On the evidence presented, the facts in the present case are very similar to those of <craftwork.com>. The Complainant has not established that its mark is famous or that the Respondent knew of its trademark when he registered the disputed domain name.
In support of <craftwork.com>, one can also cite Hasbro, Inc. v. Clue Computing, Inc., 66 F.Supp. 2d 117, (D. Mass., 1999), where the court held that holders of a mark are not automatically entitled to use that mark as their domain name: trademark law does not support such a monopoly; if another Internet user has an innocent and legitimate reason for using the mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that he has not otherwise infringed upon or diluted the trademark.
Looking closely at the facts of the present case, we note that the Respondent has invoked applicable US law to show that there are legitimate business activities that could be operated at a web site under the contested domain name without infringing the Complainant’s trademark. Respondent states:
… applicable law dictates that in order to find a mark is confusingly similar it must create a likelihood of confusion, mistake and/or deception with the consuming public. In testing for likelihood of confusion courts look to section 2(d) of the Lanham Act of the Trademark statute. 15 U.S.C. 1052. In In re E.I. Dupont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the court enumerated elements that are to be considered when determining whether a likelihood of confusion exists including, but not limited to, the following:
1. The similarity in the overall impression created by the two marks (including the marks’ look, phonetic similarities and underlying meanings);
2. The similarities of the goods and services involved;
3. The extent to which applicant has a
right to exclude others from use of its mark on its goods;
4. Any evidence of actual confusion by
consumers;
5. The intent of the defendant in adopting
its mark;
6. The physical proximity of the goods in
the retail marketplace;
7. The degree of care likely to be
exercised by the consumer; and
8. The likelihood of expansion of the
product lines.
Where similarity of the marks is important in determining likelihood of confusion, the mere existence of any one element is far from determinative that a mark causes a likelihood of confusion. Section 2 of the Trademark Act states “[n]o trademark by which goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its [resemblance].” In re E.I. Dupont de Nemours & Co., 476 F.2d 1360. The court further stated that “the question of confusion is related not to the [resemblance element] but to its effect “when applied to the goods of the applicant[.]” Id. at 1360.
The Respondent argues that it would be entirely possible to construct a web site at the disputed domain name that did not cause confusion or deception. On the basis of the evidence presented, this Panel accepts that argument.
Complainant cites
the Forum’s case FA 96355 <broadcomcorporation.com>, in which the Panel
held that willingness to transfer a domain name was an indication that a
Respondent has no legitimate rights in the contested domain name. However, that decision must be distinguished
from the present case because in that decision there was no Response. In the absence of a Response, the Panel is
entitled, in accordance with Paragraph 14(b) of the Rules, to draw such inferences as it considers
appropriate from the failure to respond.
That is, in the absence of a Response, the Panel is free to make
inferences from the very failure to respond and thus to assign greater weight
to certain circumstances than it might otherwise do.
In the present case, there has been a Response, and the Respondent has made it clear that his offer to transfer the contested domain name was made only in order to avoid a formal procedure and that this offer in no way constituted an admission of improper conduct. The Complainant has chosen not to accept the Respondent’s offer to transfer, and it has chosen not to explain why it did not accept that offer. As a consequence, the Respondent has decided to defend before this Panel what he believes to be his rights, and states clearly that the offer to transfer the domain name did not constitute an admission of any sort. This Panel finds that, in the particular circumstances of this case, the Respondent’s initial willingness to transfer the contested domain name does not indicate that the Respondent had no legitimate rights in the contested domain name.
We thus conclude that the Respondent’s use of the trademark (offering it for sale), is a legitimate interest in the sense of Paragraph 4(c) of the Policy, provided that there was no bad faith in the sense of Paragraph 4(b) of the Policy.
The question of bad faith is addressed in the next section.
Registration and
Use in Bad Faith
The Complainant states:
Respondent has intentionally registered the <cyberbroadcomm.com>
domain name to prevent Broadcom from using its BROADCOM trademark in a
corresponding domain name that correctly suggests the significant presence of
Broadcom on the Internet.
We analyze separately two key factors in this allegation:
· Whether the Respondent acted intentionally against Broadcom
· Whether the Respondent’s actions harmed Broadcom
We then analyze the question:
· Whether there is any other evidence of bad faith behavior by the Respondent
We recall that the burden of proof under these proceedings falls to the Complainant, in accordance with Paragraph 4(a) of the Policy.
Did the
Respondent act intentionally against Broadcom?
The Complainant presents no evidence to support its allegation that Respondent acted intentionally against it.
In defense, the Respondent argues that he never heard of Broadcom before these proceedings were initiated.
There is no evidence that the Respondent knew of Broadcom or its trademark. The Panel accepts the Respondent’s sworn statement saying:
I had never heard of the Broadcom Corporation until I was served a complaint by said corporation for a disputed over the above-referenced domain name. I was never aware of Broadcom’s existence, trademark rights, or the trademark rights of any other party.
This Panel is inclined to accept this statement because:
· The Respondent is based in South Carolina, while the Complainant is a California company.
· The Complainant is not engaged in the sale of consumer goods. Indeed, the Complainant makes it clear that the Complainant is active in a rather specialized segment of the high-tech market and that its customers are primarily high-tech companies, or the high-tech divisions of other companies.
· The Complainant has not provided any evidence to support its allegation that its trademark is “famous” or “well-known” outside of the rather specialized circles in which the Complainant operates.
If the Respondent had never heard of the Complainant, then he had no reason to suppose that the contested domain name would violate the Complainant’s trademark. And registering a character string as a domain name in order to sell it does constitute a legitimate use, despite the Complainant’s allegation to the contrary—so long as there is no bad faith intent to cybersquat a trademark.
There is no evidence to show that the Respondent ever envisaged selling the disputed domain name to the Complainant or to anyone in particular. On the contrary, the record shows that the Respondent made an at-large offer to sell the domain name to anybody who might be interested—and some such party could have had, as noted above, a legitimate interest in the disputed domain name.
Did the
Respondent’s actions harm Broadcom?
The Complainant provides no evidence to support its allegation that the Respondents’ actions prevented it from using its trademark BROADCOM on the web. Such evidence could be, for example, a screen shot of well-known search engines for the string “broadcom”, showing that search engines find the disputed domain name <cyberbroadcomm.com> instead of the Respondent’s site www.broadcom.com. And the existence of the Complainant’s site www.broadcom.com shows that the Respondent has not in any way prevented the Complainant from creating what appears to be a very professional and attractive web presence.
The Complainant has not proven that its trademark is sufficiently well known that the Respondent must have known about it, and this lack of proof is fatal to its claim that Respondent must have knowingly acted somehow to harm it. On this point, we cite WIPO case D2000-0967 <ezstreet.com>. In that case the Complainant owned a trademark for the word EZ STREET for use in association with asphalt products. The disputed domain name <ezstreet.com> was registered by a company that was in the business of developing web sites and the company claimed that it intended to use the web site for personal financial matters.
The panel found that that the mark EZ STREET was not a well known name, and that many others were using the string "ezstreet." Because there was no danger of confusing the protected trademark with the identical domain name, the respondent's use of the domain name for its own business purposes was held not to be in bad faith.
That is, the Complainant in the present case cannot claim exclusive rights to all domain names that incorporate the string “broadcom”, because it has not proven that its trademark is famous. There are many conceivable domain names that incorporate the string “broadcom” that can be used for legitimate business activities that would not be in any way illegal or cause harm to the Complainant.
Did the
Respondent act in bad faith in any other way?
Paragraph 4(b) of the Policy states that the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith (emphasis added):
(i)
circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the
owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of your documented
out-of-pocket costs directly related to the domain name; or
(ii)
you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii)
you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location.
The Complainant has not provided any evidence that would indicate that any of the above circumstances apply.
Nor has the Complainant provided any evidence of any other type of bad faith behavior, other than the sale of the contested domain name. But, as noted above, the mere act of selling the disputed domain name does not, of itself, constitute evidence of bad faith behavior.
Nor is Respondent’s failure to verify the existence of Complainant's trademark, alone, evidence of bad faith. Indeed, it is clear from the travaux preparatoires of the Policy that mere failure to conduct a trademark search does not constitute bad faith behavior. The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://wipo2.wipo.int/process1/report/doc/report.doc). This report states at paragraph 103:
… the performance of a prior search for potentially conflicting trademarks should not be a condition for obtaining a domain name registration. … Particularly in an international context, the requirement of searches prior to the registration of a domain name was generally considered to be unrealistic and conducive to unnecessary delays in the registration process.
And the report states at paragraph 105:
It is not recommended that domain name registrations be made conditional upon a prior search of potentially conflicting trademarks but it is recommended that the domain name application contain appropriate language encouraging the applicant to undertake voluntarily such a search.
The Complainant cites WIPO case D2000-0003 <telstra.org> in support of its position. But in the Telstra case the Panel found that:
·
the Complainant’s trademark has a strong reputation and is
widely known, as evidenced by its substantial use in Australia and in other
countries,
·
the Respondent has provided no evidence whatsoever of any
actual or contemplated good faith use by it of the domain name,
·
the Respondent has taken active steps to conceal its true
identity, by operating under a name that is not a registered business name,
·
the Respondent has actively provided, and failed to correct,
false contact details, in breach of its registration agreement, and
·
taking into account all of the above, it is not possible to
conceive of any plausible actual or contemplated active use of the domain name
by the Respondent that would not be illegitimate, such as by being a passing
off, an infringement of consumer protection legislation, or an infringement of
the Complainant’s rights under trademark law.
These conditions do not hold in the present case. Indeed, the Complainant has not shown that its trademark is widely known outside specialized circles; the Respondent has not acted deviously in any way (on the contrary, the Respondent even offered to return the disputed domain name to the Complainant—an offer that was not acted upon, for no discernible reason); and the Respondent has presented a reasonable argument to the effect that use of the disputed domain name does not constitute violation of the relevant US trademark laws.
The Panel thus finds that the Complainant has not proven that the Respondent has registered and is using the contested domain name in bad faith. As a corollary, the Panel concludes that the Complainant has a legitimate interest in the contested domain name.
Reverse Domain
Name Hijacking
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
Reverse Domain Name Hijacking means using the Policy in bad faith to
attempt to deprive a registered domain-name holder of a domain name.
The Respondent invokes this provision when it requests the Panel to find that the Complainant is guilty of Reverse Domain Name Hijacking and to allocate attorney fees and costs to the Respondent.
With respect to the fees and costs, under Paragraph 4(i) of the Policy:
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant.
Although this paragraph does not address the remedies available to the Respondent, it seems evident to this Panel that allocation of fees and costs to the Respondent cannot have been envisaged by the drafters of the Policy. Indeed, an asymmetrical situation in which only one party could recover fees and costs would be, at least for this Panel and in the context of the Policy, a violation of the basic principles of due process. Therefore the Panel finds that it has no power to award fees or costs to either party.
With respect to use of the Policy in bad faith by the Complainant, the Panel notes the Complainant’s allegations, and notes that the only proven facts are:
· The Complainant did not respond to the Respondent’s offer to relinquish the contested domain name.
· The Complainant has filed, and won, several other domain name cases.
Neither of these facts come close to constituting bad faith behavior by the Complainant. The Complainant has every right to refuse to consider the Respondent’s offer to relinquish the contested domain name. We don’t know why it did so, but failure to accept an offer cannot possibly be considered to be bad faith behavior, unless some special law mandates acceptance (for example, to prevent discrimination). And it is difficult to see how filing and winning domain name disputes could constitute bad faith behavior. The Policy exists precisely to permit parties to file cases.
A history of abusive use of the procedures to harass one or more parties might constitute an indication of bad faith use of the Policy, but such abusive use is not even alleged here, much less proven. All that Respondent can allege here is that Complainant has, in the past, chosen an economically efficient method to recover domain names to which it believed it had a right. Surely the Policy exists precisely to provide a cost-effective method to allow injured parties to recover cyberquatted domain names and surely it is commendable for parties to use the most cost effective means available to resolve their disputes.
The general conditions for a finding of bad faith on the part of the Complainant are well stated in WIPO case D2000-0993 <smartdesign.com>:
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in WIPO case D2000-1151 <goldline.com> and WIPO case D2000-1224 <sydneyoperahouse.net> (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites WIPO case D2000-0565 <planexpress.com>.
There is nothing in the record to indicate malice on the part of the Complainant and nothing to indicate that the Complainant knew that its case was insupportable.
The Panel finds
that the Complainant has not engaged in Reverse Domain Name Hijacking.
The Panel finds that the contested domain name <cyberbroadcomm.com> is confusingly similar to the Complainant’s trademark BROADCOM; that the Complainant has not proven that the Respondent has no legitimate interests in the disputed domain name; and that the Complainant has not proven that the Respondent has registered and used the disputed domain name in bad faith. The Complaint is dismissed. The Panel finds that the Complainant has not engaged in Reverse Domain Name Hijacking.
Richard Hill, Panelist
Dated: October 22, 2001
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