Broadcom Corporation v. Broadcom Co. Ltd.
Claim Number: FA0205000113313
PARTIES
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.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
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 postmaster@broadcm.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
FINDINGS
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.
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 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.
DECISION
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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