Broadcom Corporation v. Chris Carragher
Claim Number: FA0203000106113
PARTIES
Complainant
is Broadcom Corporation, Irvine, CA
(“Complainant”) represented by Gary J.
Nelson, of Christie, Parker &
Hale LLP. Respondent is Chris Carragher, New Paltz, NY
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <broadcomtechs.com> and <broadcomtechs.net>, registered with Tucows.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 27, 2002; the Forum received a hard copy of the
Complaint on March 27, 2002.
On
March 27, 2002, Tucows confirmed by e-mail to the Forum that the domain names <broadcomtechs.com> and <broadcomtechs.net> are registered with Tucows and that Respondent
is the current registrant of the names.
Tucows has verified that Respondent is bound by the Tucows 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
March 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 17,
2002 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@broadcomtechs.com and postmaster@broadcomtechs.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
April 26, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
The
<broadcomtechs.com> and <broadcomtechs.net> domain names are confusingly similar to
Complainant's BROADCOM mark. Respondent
has no rights or legitimate interests in the <broadcomtechs.com>
and <broadcomtechs.net>
domain names. Respondent registered the
disputed domain names in bad faith.
B.
Respondent did not file a Response in this proceeding.
FINDINGS
Since 1994, Complainant has used the
BROADCOM mark continuously in relation to computer hardware, software,
integrated circuits, computers and broadband communications. Complainant designs, develops and supplies
integrated circuits for a number of broadband communication markets including
cable modems, direct broadcast satellite and other networks. All of Complainant's services are associated
with the BROADCOM trademark.
Complainant owns three trademark
registrations for the BROADCOM mark: No. 2,132,930, No. 2,392,925, and No.
2.326,387. Currently Complainant has
pending trademark applications for variations of the BROADCOM mark.
Respondent registered the disputed domain
names on February 24, 2002. Respondent has not used the disputed domain names.
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 and
draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 Respondent is identical or confusingly similar to
a trademark or service mark in which Complainant has rights; and
(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.
Respondent's domain names are confusingly
similar to Complainant's BROADCOM mark.
The disputed domain names <broadcomtechs.com> and <broadcomtechs.net> merely add the generic suffix
"techs" to the entirety of Complainant's mark. The use of a generic suffix or word, which
is descriptive of the business of the Complainant, does not defeat a claim of
confusing similarity. See Brown
& Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity); 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 Policy ¶ 4(a)(i) has
been satisfied.
Complainant urges that Respondent has no
rights to or legitimate interests in the mark contained within the disputed
domain names. Respondent did not file a
response in this proceeding and under such circumstances the Panel is permitted
to presume that Respondent has no rights or legitimate interests in the <broadcomtechs.com> and <broadcomtechs.net> domain names. See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to
submit a Response, the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc. v. Robertson,
D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”).
No evidence in the record suggests that
Respondent is commonly known by the Complainant’s mark and Respondent has not
come forward to establish evidence that Respondent is commonly known by the <broadcomtechs.com> and <broadcomtechs.net> domain names pursuant to Policy ¶
4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to
demonstrate any rights or legitimate interests in the <twilight-zone.net>
domain name since Complainant had been using the TWILIGHT ZONE mark since
1959).
Furthermore, based on the fame of
Complainant's BROADCOM mark, even if Respondent had been actively using the
domain names to offer goods or services, or for a noncommercial use, it would
be very difficult for Respondent to show that it had rights and legitimate
interests in the disputed domain names.
Any use by Respondent of the <broadcomtechs.com> and <broadcomtechs.net> domain names would be an opportunistic
attempt to attract customer's via Complainant's famous mark. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
(finding no rights or legitimate interests where one “would be hard pressed to
find a person who may show a right or legitimate interest” in a domain name
containing Complainant's distinct and famous NIKE trademark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
The <broadcomtechs.com> and <broadcomtechs.net> domain names are confusingly similar to
Complainant's mark and the Internet user will likely believe that there is an
affiliation between Respondent and Complainant. Registration of confusingly similar domain names is evidence of
bad faith. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”).
Furthermore, because of the famous and
distinctive nature of Complainant's BROADCOM mark, Respondent is thought to
have been on notice of the existence of Complainant's mark at the time
Respondent registered the infringing <broadcomtechs.com> and <broadcomtechs.net> domain names. See 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); see
also Victoria's Secret v. Hardin,
FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety
of Complainants' famous marks, Respondent had actual or constructive knowledge
of the BODY BY VICTORIA marks at the time she registered the disputed domain
name and such knowledge constitutes bad faith).
Respondent acted in bad faith when it registered
the disputed domain names in order to prevent Complainant from using its
BROADCOM mark in the corresponding domain names <broadcomtechs.com>
and <broadcomtechs.net> as set out in Policy ¶ 4(b)(ii). See Toyota
Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9,
2000) (finding that “Registration of a domain name [by Respondent that
incorporates another’s trademark] goes further than merely correctly using in
an advertisement the trade mark of another in connection with that other’s
goods or services: it prevents the trade mark owner from reflecting that mark
in a corresponding domain name”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
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 <broadcomtechs.com> and <broadcomtechs.net> domain names be transferred from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: May 7, 2002.
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