Broadcom Corporation v. Cable Management
Ireland
Claim Number: FA0207000115077
PARTIES
Complainant
is Broadcom Corporation, Irvine, CA
(“Complainant”) represented by Gary J.
Nelson, of Christie, Parker &
Hale LLP. Respondent is Cable Management Ireland, Dublin
(“Respondent”) represented by Tara Larney,
of Internet Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <broadcom-solutions.com>,
registered with Network Solutions, Inc.
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.
Hon.
Roger P. Kerans as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 11, 2002; the Forum received a hard copy of the
Complaint on July 12, 2002.
On
July 15, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <broadcom-solutions.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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
July 15, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 5,
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@broadcom-solutions.com by e-mail.
A
timely Response was received and determined to be complete on August 5, 2002.
Complainant’s
Additional Submission was received and determined to be complete on August 6,
2002.
On August 22, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon Roger P.
Kerans as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The
Complainant has registered the trademark “broadcom” from 1994 in the USA and in
Europe from 1999 respecting computer hardware and software, and more
specifically integrated circuits and their design. It has used this term exclusively
as a trademark since 1994. It describes itself as a leading manufacturer in the
filed of digital broadband communications.
It
also contends that the name ‘broadcom-solutions” creates a likelihood of
confusion, that the Respondent has made no use of the disputed name, and is
squatting.
B.
Respondent
Internet
Ireland filed a Response to say that it is the successor of the Respondent
Cable Management Ltd., an Irish Internet service provider since 2000. It
further said that the Respondent registered the name on behalf of a client,
Froysham Ltd., contact person Michael Connelly of Warrenstown, Drumree in
County Meath and was registered to the Respondent in error. Further, the name Broadcom Solutions has
been registered in Ireland as a business name since February 2000.
B. Additional Submissions
The Complainant filed a further
submission to point out that the registered owner, in its submission, admitted
it had no business or legitimate interest in the name in issue.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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
Manifestly, the names “broadcom and
“broadcom-solutions” are confusingly similar, and I note no contrary argument
was offered by the registrant or by its client, who has chosen not to
intervene. The word “broadcom” is a coined word, with no meaning except that
which it has acquired in use. The only
evidence of any use is in connection with the Complainant’s business. The
appendage “solutions” in this context is almost meaningless, and does not serve
in any way to distinguish the term “broadcom” in any significant way from its
use by the Complainant. On the
contrary, to the extent it has any meaning, it points toward the Complainant
business because the term “solutions” is often employed in the computer
industry. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the Complainant combined with a generic word or
term); see also Sony Kabushiki Kaisha v.
Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the
addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the
overall impression of the dominant part of the name in each case, namely the
trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
The
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights
Rights or Legitimate Interests
I am
satisfied that the Complainant has well-established rights to the use of the
term “broadcom” in Europe since 1999 if not before. Again, there is no suggestion by the Respondent or the alleged
true owner of the domain that the use “broadcom-solutions” is an expression of
some legitimate interest or right.
Respondent’s
Submission suggests that, because the correct registrant of the domain name
should be reflected on the WHOIS data as Broadcom Solutions, it has
demonstrated its rights and legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). Respondent asserts that it was acting on behalf of their
client, Broadcom Solutions, whose name indicates an obvious relationship with
the subject domain name. VeriSign Inc. v.
VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has
rights and a legitimate interest in the domain name since the domain name
reflects Respondent’s company name).
It is
one thing to register a business name, quite another to actually carry on
business under that name. And a
registered business name is quite different from a corporate or personal
name. There is no corporate or personal
name established here – and no business.
This argument also begs the question how
anybody could reasonably expect to use a coined word in its business when there
are existing property rights in the word. Despite the Verisign decision, I would say that one can look behind a corporate
shell to see if there is any reality. See Broadcom
v. Ayers International (NAF July 24, 2002). In any event, that issue does not arise there is no evidence of a
corporation called Broadcom Solutions.
The Respondent has no rights or
legitimate interests in respect of the domain name. Neither has the client.
Registration and Use in Bad Faith
It is
said for the Respondent that its client had registered the business name in
Ireland, and this establishes that its use is not in bad faith. The client, however, did not intervene and
offers no evidence to demonstrate its good faith.
In my view, the registration of a
business name without any evidence of an actual business or business use, the
existence of a dead website for over two years without any evidence of a plan
or intention to develop it, and the adoption of a coined word that was invented
by the Complainant and has no meaning outside the context of its business,
combined with the failure of the alleged true owner to intervene, all point to
only one reasonable inference. This is
a case of cybersquatting.
DECISION
The name is transferred.
___________________________________________________
Hon Roger P Kerans, Panelist
Dated: August 28, 2002
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