Broadcom Corporation v. Cable Management Ireland
Claim Number: FA0207000115077
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.
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.
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 email@example.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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
The name is transferred.
Hon Roger P Kerans, Panelist
Dated: August 28, 2002
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