national arbitration forum

 

DECISION

 

Broadcom Corporation v. Peter

Claim Number: FA1010001354127

 

PARTIES

Complainant is Broadcom Corporation (“Complainant”), represented by Susan M. Natland of Knobbe, Martens, Olson & Bear, LLP, California, USA.  Respondent is Peter (“Respondent”), Nigeria.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <broadcomnetworks.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Anne M. Wallace, Q.C., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2010; the National Arbitration Forum received payment on October 25, 2010.

 

On October 27, 2010, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <broadcomnetworks.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@broadcomnetworks.com.  Also on October 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on November 18, 2010.

 

A timely Additional Submission was received from Complainant dated November 23, 2010.  A timely Additional Submission was received from Respondent dated November 29, 2010.

 

On November 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant submits:

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

B. Respondent

 

A response was filed by Broadcom Networks Investment Limited (“Networks”). Networks claims that Respondent, Peter Ihesie, is one of Networks’ consultants to assist Networks on Internet related matters.

 

Networks submits:

 

 

 

 

 

 

 

 

 

 

 

 

C. Additional Submissions

 

Complainant field an Additional Submission in which Complainant asserts:

 

 

 

 

 

 

 

Networks filed an Additional Submission in which:

 

 

 

FINDINGS

 

·        Complainant has widely established rights in the trademark BROADCOM.

 

·         The disputed domain name <broadcomnetworks.com> is confusingly similar to 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."

 

Paragraph 4(a) of the Policy requires that 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.

 

Preliminary Matter

 

Respondent Ihesie is listed as the registrant of the disputed domain name. As I have noted above, the Response has been filed by an entity purporting to be Broadcom Networks Investments Limited. Networks says Ihesie is one of its consultants that assists Networks in Internet related matters. Complainant argues that since Networks is the not the proper Respondent in this proceeding, the Panel should not consider the Response.

 

Forum Supplemental Rule 1 defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. Networks has provided submissions, albeit with no substantiating documentation, that Ihesie is a consultant who registered the disputed domain name on behalf of Networks. In these circumstances, the Panel will consider Networks’ submissions and arguments as being made on behalf of the registrant, Ihesie. I note as well that whether or not the Panel considers Networks’ submissions, the result is the same.

 

Identical and/or Confusingly Similar

 

Complainant has submitted evidence to show that it owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its BROADCOM mark (e.g., Reg. No. 2,392,925 issued October 10, 2000).  Complainant further supplies information on the following trademark registrations for its BROADCOM mark with other governmental trademark authorities:

 

1.  Chinese State Industrial Property Office (“SIPO”) (Reg. No. 1,759,458 issued April 28, 2002);      

2.  European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 763,540 issued August 23, 1999);

3.  South African Companies and Intellectual Property Registration Office (“CIPRO”) (e.g., Reg. No. 1998/03120 issued February 27, 1998); and

4.  Intellectual Property Office of Australia (“IPOA”) (e.g., Reg. No. 807,938 issued September 22, 1999).

 

Complainant has supplied sufficient evidence to establish rights in the BROADCOM mark under Policy ¶ 4(a)(i) through its many trademark registrations worldwide.  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

The <broadcomnetworks.com> domain name is confusingly similar to Complainant’s BROADCOM mark. Since the disputed domain name contains the entire BROADCOM mark while merely adding the generic term “networks” and the generic top-level domain (“gTLD”) “.com”, Respondent has not created a domain name distinct from Complainant’s mark.  See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Rights or Legitimate Interests

 

There is no cogent evidence before the Panel to validate Networks’ claims that it is operating under the business name of “Broadcom Networks Investments Limited” or any similar name. While Networks submitted what purports to be corporate and tax registration documents and banking documents, there is no evidence that Networks has actually engaged in any real business activity in Nigeria or elsewhere. Neither has the disputed domain name been connected with active content at any time since Respondent registered the domain name in May of 2010. Respondent has produced no evidence of demonstrable preparations to use the disputed domain name.

 

Respondent’s lack of business activity and lack of use of the disputed domain name raise the inference that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).

 

Registration and Use in Bad Faith

 

There are several indications of bad faith registration and use in this case. Respondent has registered several other domain names that infringe upon the trademark rights of others.  These include such domain names as, <argentcapitalng.com> which is confusingly similar to the third-party “Argent Capital” mark; <fmf-nigeria.com> that is confusingly similar to a third-party trademark for “fmf,” and many other infringing domain names. Respondent’s registration of several other domain names that contain third-party trademarks is evidence of bad faith in the instant proceedings under Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

 

Complainant argues that Respondent’s registration and use of the disputed domain name is obviously connected with Complainant’s BROADCOM mark. Complainant contends that Respondent’s registration of the confusingly similar domain name where it is not connected with or authorized by Complainant is evidence of bad faith under Policy ¶ 4(a)(iii). Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the BROADCOM mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

In this case there is sufficient evidence to permit the Panel to make a finding of actual knowledge of Complainant’s BROADCOM mark. The Panel notes:

 

 

 

 

 

 

To succeed in an argument that Networks was not aware of the BROADCOM mark, Networks would have to assert and prove that, without any knowledge of the Complainant or its BROADCOM mark, Respondent independently conceived of the BROADCOM mark on its own. Respondent has not made any such allegation. On the contrary, Respondent admits its “unparalleled aim towards partnering with leading companies in the world to offer world class products, solutions and service” and that from inception, Networks’ primary goal has always been to do genuine business both in and outside Nigeria as legislation and regulation permits in each country where they intend to do business.

 

Respondent’s clear intention is to do business using the BROADCOM name. The only possible reason Respondent could have chosen BROADCOM as part of its business name is because of the goodwill associated with Complainant’s marks. All the evidence taken together, especially Networks’ own admissions, leads to an inference Networks had actual knowledge of Complainant and Complainant’s BROADCOM mark when it registered the disputed domain name.

 

Respondent has not used the disputed domain name in connection with any active content since registering the name in May 2010.  Such non-use is also evidence of Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). 

 

All these factors combined demonstrate Respondent has registered and is using the disputed domain name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <broadcomnetworks.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Anne M. Wallace, Q.C., Panelist

Dated:  December 13, 2010

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page