Broadcom Corporation v. Eastsound Ventures
Claim Number: FA0110000100179
Complainant is Broadcom Corporation, Irvine, CA ("Complainant") represented by Gary J. Nelson, of Christie, Paker & Hale LLP. Respondent is Eastsound Ventures, Thousand Oaks, CA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <contentaware.com> and <contentaware.net>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 28, 2001; the Forum received a hard copy of the Complaint on October 1, 2001.
On October 2, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <contentaware.com> and <contentaware.net> 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 October 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 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 email@example.com,contentaware.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 November 2, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Due to a communication malfunction, publication of the decision was delayed.
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 names be transferred from Respondent to Complainant.
The <contentaware.com> and <contentaware.net> domain names are identical to Complainant’s CONTENTAWARE mark. Respondent has no rights or legitimate interests in respect to <contentaware.com> and <contentaware.net>. Respondent registered <contentaware.com> and <contentaware.net> in bad faith.
B. Respondent did not file a response in this proceeding.
Complainant has at least one application pending for its CONTENTAWARE trademark filed February 2000 at the United States Patent and Trademark Office. Complainant established its rights in the CONTENTAWARE mark prior to Respondent’s registration of the domain names in issue.
Complainant is a leading provider of integrated circuits, computer hardware, and software in the field of digital broadband communications. Complainant’s net revenue exceeded one million dollars last year.
Respondent registered the domain names at issue in June of 2000. Respondent never developed the sites and is now passively holding the domain names.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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 to and/or Confusingly Similar
Complainant has established its rights to the CONTENTAWARE mark. Respondent’s <contentaware.com> and <contentaware.net> domain names are identical to Complainant’s CONTENTAWARE mark. The addition of ".com" or ".net" to Complainant’s mark does not adequately distinguish the domain names from Complainant’s mark. See The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).
The Panel finds that policy ¶ 4(a)(i) has been satisfied.
Rights to or Legitimate Interests
Complainant has established its rights to and legitimate interests in the CONTENTAWARE mark. Respondent does not have any rights to or legitimate interests in <contentaware.com> and <contentaware.net> because it does not use them for a bona fide offering of goods. Respondent’s passive holding of the infringing domain names 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 is not known as CONTENTAWARE and does not acquire rights in the mark and the disputed domain names <contentaware.com> and <contentaware.net> by that route. Respondent is known as Eastsound Ventures. 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 has held the domain names in issue passively. Holding domain names passively does not create rights to or legitimate interests in the domain names because passively holding infringing domain names 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
Complainant argues that Respondent acted in bad faith in registering domain names that contained Complainant’s mark in its entirety and by holding those names passively. The evidence permits an inference that Respondent knowingly registered Complainant’s mark and then held it passively. Passive holding of the <contentaware.com> and <contentaware.net> domain names 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).
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 names <contentaware.com> and <contentaware.net> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 26, 2001
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