Broadcom Corporation v. Myers and Myers; K Myers
Claim Number: FA0109000100136
Complainant is Broadcom Corporation, Irvine, CA ("Complainant") represented by Gary J. Nelson, of Christie, Parker & Hale LLP. Respondent is Myers and Myers; K Myers, Newport Beach, CA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <broadcomusa.com>, registered with Register.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 26, 2001; the Forum received a hard copy of the Complaint on September 26, 2001.
On September 28, 2001, Register.com confirmed by e-mail to the Forum that the domain name <broadcomusa.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 September 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 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 firstname.lastname@example.org 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 October 23, 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.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The <broadcomusa.com> domain name is confusingly similar to Complainant’s BROADCOM mark.
Respondent has no rights or legitimate interests with respect to <broadcomusa.com>.
Respondent registered <broadcomusa.com> in bad faith.
No Response was received.
Complainant has at least three registered U.S. trademarks and five U.S. applications pending for the BROADCOM trademark. Complainant has used the BROADCOM mark exclusively since November 1994.
Complainant is a leading provider of integrated circuits, computer hardware, and software in the field of digital broadband communications. Complainant’s net revenue exceeded 1 million last year.
Respondent registered the domain name at issue and never developed it. Respondent is now passively holding the domain name.
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
Respondent’s <broadcomusa.com> domain name is confusingly similar to Complainant’s BROADCOM mark. The addition of a geographical location like "usa" does not poperly distinguish Respondent’s domain name from Complainant’s mark. See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar."); see also Nike, Inc. v. Jung, D2000-1471 (WIPO Dec. 30, 2000) (finding domain names <nikeeurope.com> and <nike-europe.com> confusingly similar to Complainant’s NIKE mark).
The Panel finds that policy 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent does not have any rights or legitimate interests in <broadcomusa.com> because it does not use the domain name for a bona fide offering of goods. Respondent’s passive holding of the infringing domain name is not a bona fide offering of goods. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the Respondent failed to submit a response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).
Respondent does not have any rights or legitimate interests in <broadcomusa.com> because it is not commonly known by the BROADCOM name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent does not have any rights or legitimate interests in <broadcomusa.com> because passively holding an infringing domain name is not a fair use. See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name); see also State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
The Panel finds that Policy 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s passive holding of <broadcomusa.com>, a domain name identical to Complainant’s famous mark, is evidence of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that "it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"); see also TV Globo Ltda v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name in dispute is obviously connected with a well known mark, (2) Respondent deliberately chose a domain name which is the mark of the largest TV operator in the world’s largest Portuguese speaking country, and (3) Respondent failed to develop the site); see also
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).
Further, Respondent’s use of a domain name that is confusingly similar to a well-known name like BROADCOM is itself evidence of bad faith. See Deutsche Bank AG v. Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the domain name is so obviously connected with Complainant and its services that for someone unconnected to Complainant to use it suggests bad faith); see also FAO Schwartz v. Zuccarini, FA95828 (Nat. Arb. Forum Dec. 1, 2000) (finding same).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <broadcomusa.com> be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 25, 2001
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