Broadcom Corporation v.
Smoking Domains and Michelle Lehman
Claim Number: FA0212000137037
PARTIES
Complainant is Broadcom
Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson, of Christie,
Parker & Hale LLP. Respondent
is Smoking Domains and Michelle Lehman, Phoenix, AZ (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <broadcommunications.com>,
registered with Enom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration
Forum (the “Forum”) electronically on December 10, 2002; the Forum received a
hard copy of the Complaint on December 11, 2002.
On December 12, 2002, Enom, Inc. confirmed by e-mail to the
Forum that the domain name <broadcommunications.com>
is registered with Enom, Inc. and that the Respondent is the current registrant
of the name. Enom, Inc. has verified
that Respondent is bound by the Enom, 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 December 16, 2002, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of January 6, 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@broadcommunications.com
by e-mail.
A timely Response was received and determined to be complete on January
6, 2003.
On January 13, 2003,
pursuant to Complainant’s request to have the dispute decided by a single-member
Panel, the Forum appointed the Honorable Roger P. Kerans as Panelist.
Due to unforeseen circumstances it became necessary to appoint another
panelist in order to render a decision in this dispute.
On February 5, 2003 the Forum appointed
the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that Respondent is using the domain name to
divert Internet users to a website that auctions domain name registrations.
B. Respondent
Respondent, Smoking Domains and
Michelle Lehman, contends that the disputed domain name is not confusingly
similar to Complainant’s BROADCOM mark because the overall impression of the
<broadcommunications.com>
domain name is not similar to Complainant’s mark. Respondent asserts that the disputed domain name is a combination
of two generic terms, “broad” and “communications.” Respondent asserts that Complainant is not entitled to protection
for every usage of the word “broad” in combination with other terms, and
therefore the disputed domain name is not confusingly similar to Complainant’s
mark. Respondent contends that there is
no evidence that “com” and “communications” are interchangeable.
Respondent argues that its use of the disputed domain name in
conjunction with its business of selling domain name registrations is a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(i).
Respondent asserts that it did not register or use the disputed
domain name in bad faith.
C. Additional Submissions
Complainant contends that Respondent’s domain name <broadcommunications.com>
is confusingly similar to the registered BROADCOM trademarks. The BROADCOM name is readily understood to
be an abbreviation of the words “broadband” and “communications,” representing
Complainant’s primary product line.
FINDINGS
Complainant, Broadcom
Corporation (“Complainant” or ABroadcom@), has at least five registered United
States trademarks and three United States trademark applications pending for
numerous variations of its BROADCOM trademark.
Broadcom began using the BROADCOM trademarks as early as November 1994
and has been using the marks continuously ever since their initial
adoption. Complainant uses the marks to
identify its goods and services in the field of digital broadband
communications. Broadcom’s
trademark rights in the BROADCOM trademarks were established long before
Respondent registered <broadcommunications.com>
on November 20, 2002.
Broadcom is a leading provider of integrated circuits, computer
hardware and software in the field of digital broadband communications. Broadcom provides highly integrated silicon
solutions that enable broadband digital transmission of voice, video, and
data. Broadcom designs, develops and
supplies integrated circuits for broadband communications markets, including
the markets for cable set‑top boxes, cable modems, high‑speed
local, metropolitan and wide area networks, home networking, Voice over
Internet Protocol (VoIP), residential broadband gateways, direct broadcast
satellite and terrestrial digital broadcast, optical networking, digital
subscriber lines (xDSL) and wireless communications.
Broadcom has a significant
market share in cable modems, digital set‑top boxes, residential
broadband gateways, high‑speed home networking and Fast Ethernet
networking, and provides key technology and products in emerging broadband
markets such as digital subscriber line (DSL), fixed wireless, direct broadcast
satellite and terrestrial digital broadcast.
Broadcoms revenue for the year ending 2001, as reported in its On-line Annual
Report, was approximately $961,800,000.00.
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
Complainant contends that Respondent’s <broadcommunications.com>
domain name is confusingly similar to its BROADCOM marks because it merely
changes the “com” portion of “broadcom” to “communications.” Broadcommunications is simply a complete
spelling of Broadcom’s registered mark.
Complainant asserts that the conversion of the abbreviated “com” to its
unabbreviated form does not create a distinct mark capable of overcoming a
claim of confusing similarity because the domain name will still be associated
with Complainant’s goods and services as BROADCOM is the equivalent of
“broadcommunications.” See Treeforms, Inc. v. Cayne Indus. Sales Corp.,
FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result
when Internet users, intending to access Complainant’s website, think that an
affiliation of some sort exists between Complainant and Respondent, when in
fact, no such relationship would exist).
Complainant contends that
the “com” portion of the BROADCOM trademarks is universally understood to be an
abbreviation of the “communications” portion of the contested domain name. See
Broadcom Corporation v. Broadband Communication Networks, LLC, FA 97871
(Nat. Arb. Forum Aug. 3, 2001) (“domain names that incorporate another’s
trademark and merely add a generic descriptor are still confusingly similar for
the purposes of Policy par. 4(a)(i)”); see also Broadcom Corporation v. Corporategamer.com, FA 96355 (Nat. Arb.
Forum Feb. 12, 2001) (“[t]he addition of the generic word, corporation, which
describes Complainant’s business, does not avoid confusing similarity with
Complainant’s BROADCOM mark”); see also Space Imaging LLC v. Stephen J. Brownell, AF0298 (eResolution Sept.
22, 2000) (finding confusing similarity where the Respondent’s domain name
combined the Complainant’s mark with a generic term that has an obvious
relationship to the Complainant’s business); see also E Auto, L.L.C. v. Net Me Up, D2000-0104
(WIPO Apr. 13, 2000) (the domain name <eautomotive.com> found to be
confusingly similar to the trademark EAUTO).
Each of the preceding cases
concern adding a generic term to a trademark.
However, that is not the situation here. The two generic terms comprising Respondent’s domain name are
“broad” and “communications.” Adding
the generic term “communications” to Complainant’s trademark would result in
“broadcomcommunications.” Rather, the
addition to Complainant BROADCOM trademark are the letters “munication” which
spell out the abbreviation for “com” as used by Complainant. This case is more analogous to Bank of
America Corporation v. Fluxxx, Inc., where the Complainant failed to prove
“confusing similarity” between its NATIONSBANK mark and <nationsbanking.com>. See Bank of America Corporation v.
Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (finding that
Complainant failed to prove “confusing similarity” under Policy ¶ 4(a)(i)
because it did not demonstrate that the public would be confused between its
NATIONSBANK mark and the disputed domain name <nationsbanking.com>). As with NATIONSBANK, Complainant has failed
to show that “communication” is likely the meaning the public would give to the
letters “com.”
The Panel concludes that the disputed
domain name is not confusingly similar to Complainant’s BROADCOM mark because
the overall impression of the <broadcommunications.com>
domain name is not similar to Complainant’s mark. The
domain name <broadcommunications.com> is different, generic, and
not likely to confuse the public. Id. The disputed domain name is a combination of
two generic terms, “broad” and “communications.” Complainant is not entitled to protection for every usage of the
word “broad” in combination with other terms, and therefore the disputed domain
name is not confusingly similar to Complainant’s mark. See Zero International Holding GmbH & Co.
Kommanditgesellschaft v. Beyonet Services and Stephen Urich, D2000-0161 (WIPO May 12, 2000) (stating that
"[c]ommon words and descriptive terms are legitimately subject to
registration as domain names on a 'first-come, first-served' basis"); see
also Pet Warehouse v.
Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (finding that
"pet" and "warehouse" are generic terms and therefore not
subject to trademark protection; although it is possible for two generic terms
taken together to achieve trademark or service mark status by achieving a
sufficient level of secondary meaning in the relevant community, the burden is
on the party making a claim to show distinctiveness or secondary meaning). Complainant has not claimed common law
rights in the term BROADCOMMUNICATIONS.
Complainant contends that the second
portion of its mark, “com,” is a universally recognized abbreviation for “communications.” However, there are other well-known meanings
for “com” such as comedy, comic, comma, and commercial organization. See www.m-w.com/cgi-bin/dictionary,
Merriam-Webster, Unabridged-online.
For the disk operating system known as DOS, the term “com” is defined as
“in DOS System, the name of a serial communications port),
see www.webopedia.com/TERM/D/COM.html. A
recent and common use of “.com” refers to the top-level domain (TLD) on the
Internet that was designed for use as “unrestricted (but intended for
commercial registrants).” See
www.icann.org/tlds/ Top-Level Domains.
Therefore, the evidence does not support that “com” and “communications”
are interchangeable.
Complainant has failed to show that “broad communications” is
the likely meaning that most people would give to Complainant’s BROADCOM
mark. See ISL Marketing AG, and The
Federation Internationale de Football Association v. J.Y. Chung,
Worldcup2002.com, W Co., and Worldcup 2002, D2000-0034 (WIPO Apr. 3, 2000)
(finding that, although one may argue that “wc” is an abbreviation for WORLD
CUP, it is not likely the meaning most people would give to those letters); see
also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. Feb. 11, 2002)
("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware
that domain names for different websites are quite often similar, because of
the need for language economy, and that very small differences matter").
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has not been
satisfied. Because satisfaction of each
element listed under paragraph 4(a) is mandatory, it is not necessary to pursue
analysis under Policy ¶¶ 4(a)(ii) or (iii).
See Creative Curb v. Edgetec International Pty. Ltd., FA 116765
(Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove
all three elements under the Policy, Complainant’s failure to prove one of the
elements makes further inquiry into the remaining element unnecessary).
Complainant fails in establishing rights in a trademark or
service mark identical or confusingly similar to the domain name under Policy ¶
4(a)(i).
Having failed to fulfill Policy ¶ 4(a)(i) as required under
ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <broadcommunications.com> domain name registration REMAIN with
Respondent.
The Honorable Charles K.
McCotter, Jr. (Ret.), Panelist
Dated: February 11, 2003
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