Broadcom Corporation v. Broadcom Co. Ltd.
Claim Number: FA0205000113313
Complainant is Broadcom Corporation, Irvine, CA, USA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP. Respondent is Broadcom Co. Ltd., Osaka, JAPAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <broadcm.com>, registered with Network Solutions.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 9, 2002; the Forum received a hard copy of the Complaint on May 10, 2002.
On May 14, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <broadcm.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 May 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 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 email@example.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.
On June 19, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 Respondent to Complainant.
1. Respondent’s <broadcm.com> domain name is confusingly similar to Complainant’s registered BROADCOM mark.
2. Respondent has no rights or legitimate interests in the <broadcm.com> domain name.
3. Respondent registered and used the disputed domain name in bad faith.
B. Respondent did not submit a Response.
Complainant is the owner of numerous U.S. trademark registrations for the BROADCOM mark, including, Reg. No. 2,132,930 registered on the Principal Register on January 27, 1998 and Reg. No. 2,392,925 registered October 10, 2000. Similarly, Complainant has five Japanese trademark registrations establishing trademark rights at Respondent’s place of domicile. Complainant also has five pending trademark applications for numerous variations of its BROADCOM trademark.
Complainant is a leading provider of integrated circuits, computer hardware and software in the field of digital broadband communications. Complainant’s revenue for the year ending 2001 was approximately $961,800,000. All of Complainant’s products and services are associated with its BROADCOM mark.
Respondent registered the disputed <broadcm.com> mark on April 15, 2002 and has yet to state a purpose for the domain. Upon Complainant’s investigation, Respondent does not own any Japanese trademark registrations or applications for any mark containing the BROADCOM mark. Respondent is not licensed or authorized to use Complainant’s mark.
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Complainant has established its rights in the BROADCOM mark through registration and the filing of trademark applications with numerous countries, including Respondent’s place of domicile, and subsequent continuous use.
Respondent’s <broadcm.com> domain name is confusingly similar to Complainant’s BROADCOM mark. Respondent’s domain name contains the Complainant’s established mark in its entirety with the deletion of the letter “o.” The deletion of one letter fails to detract from the dominant BROADCOM mark’s presence. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders it confusingly similar to Complainant’s marks).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a Response in this matter, the Panel may presume it has no rights or interests in respect of the disputed domain name. 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).
Given the notoriety of Complainant’s BROADCOM mark, it seems unlikely that Respondent could have any rights or interests in a domain name confusingly similar to Complainant’s BROADCOM 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).
Respondent has yet to develop a purpose for the domain name. However, due to the fame of Complainant’s BROADCOM mark, it can be inferred that Respondent’s eventual use of the contested domain name will involve diverting Internet users searching for Complainant’s products to Respondent’s website. Respondent’s eventual use of Complainant’s mark is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
Respondent is not commonly known by “broadcm” or <broadcm.com> pursuant to Policy ¶ 4(c)(ii). Respondent is not authorized to use Complainant’s BROADCOM mark nor is Respondent a licensee of Complainant. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Because of the famous nature of Complainant’s BROADCOM mark, its listing on the Principal Register of the U.S. Patent and Trademark Office and Complainant’s registration of its BROADCOM mark in Japan, Respondent is thought to have had notice as to the existence of Complainant’s mark at the time Respondent registered the infringing <broadcm.com> domain name. Because Respondent knew of Complainant’s prior trademark rights in its BROADCOM mark, its registration and use of the contested domain name for commercial gain suggests opportunistic bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).
It can be inferred that Respondent registered and will eventually use the <broadcm.com> domain name, a domain name that is confusingly similar to Complainant’s BROADCOM mark, in order to benefit from Complainant’s goodwill and create confusion as to the source or sponsorship of its website. Respondent’s actions demonstrate bad faith registration and use within the meaning of Policy ¶ 4(b)(iv). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding 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”).
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 should be hereby GRANTED.
Accordingly, it is Ordered that the <broadcm.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 25, 2002
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