DECISION

 

Broadcom Corporation v. Olivier Taupin and Ulpenetworks

Claim Number: FA0302000146246

 

PARTIES

Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is Olivier Taupin Ulpenetworks, Laguna Beach, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <broadecom.com>, registered with Wild West Domains, 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.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 20, 2003; the Forum received a hard copy of the Complaint on February 21, 2003.

 

On February 21, 2003, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <broadecom.com> is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 February 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 17, 2003 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@broadecom.com by e-mail.

 

A timely Response was received and determined to be complete on March 11, 2003.

 

A timely Additional Submission from Complainant was received and determined to be complete on March 17, 2003.  A timely Additional Submission from Respondent was received and determined to be complete on March 19, 2003.

 

On March 18, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

            1.         Complainant has at least five registered trademarks and three trademark applications pending in the United States Patent and Trademark Office for numerous variations of its BROADCOM trademark.  BROADCOM has been the substantially exclusive user of its BROADCOM trademark beginning at least as early as November 1994, and has been using the mark continuously ever since.  In the United States, and throughout the word, BROADCOM’s trademark rights in BROADCOM were established long before Respondent illegally adopted and registered the disputed domain name.

 

            2.         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 communications and networking of voice and data services.

 

            3.         The disputed domain name is confusingly similar to Complainant’s BROADCOM trademark.  The “broadecom” portion of the domain name and the BROADCOM trademark are virtually identical, the pronunciation is identical and the connotation is identical.  The confusing similarity between the registered domain name and the BROADCOM trademark is not changed by the insertion of the letter “e” between “broad” and “com.”

 

            4.         Respondent has no rights or legitimate interests in the disputed domain name.

 

            5.         Respondent has made no demonstrable use, or preparations to use, the <broadecom.com> domain name, or a name corresponding to the <broadecom.com> domain name, in connection with a legitimate and bona fide offering of goods and services.  Rather, Respondent is merely squatting on the domain name.

 

            6.         If there were any actual use by Respondent of <broadecom.com> or any other variation of BROADCOM, it would be an infringement on Complainant’s rights in its BROADCOM trademark.

 

            7.         Respondent is not commonly known by the term BROADECOM or any other variation of BROADCOM.  Rather, Respondent appears to be known as either Olivier Taupin or uplnetworks.

           

            8.         Respondent has registered and is using the <broadecom.net> domain name in bad faith.  Respondent has intentionally registered the disputed domain name to prevent Complainant from using its BROADCOM trademark in the corresponding phonetically-equivalent domain name (i.e., <broadecom.com>).

 

            9.         In the broadband communications field, Complainant’s BROADCOM trademark is so obviously connected with BROADCOM that use of a phonetically-equivalent domain name by someone with no connection with BROADCOM suggests bad faith.

 

            10.       The warehousing of a well-known trademark such as BROADCOM, by itself, is evidence of bad faith.

 

B. Respondent

            1.         Complainant does not have a trademark right to the disputed domain name.  Respondent is developing a broadcasting e-commerce portal, allowing users to easily send large number of faxes, e-mails, and SMS messages.  This web portal, which ULP Networks started to develop in July 2002, includes a web-based contact management utility, a quick process to send faxes, e-mails or SMS, and log to follow the broadcasting process.

 

            2.         Complainant has no trademarks relating to communication broadcasts, fax, SMS, e-mail, web portal, or e-commerce that are going to be the uses of the disputed domain name.

 

            3.         Respondent is an Application Service Provider (ASP), not a semiconductor manufacturer.  Targeted customers are consumers and small business users, none of whom have any needs linked to Complainant’s current trademarks.

 

            4.         The disputed domain name is not confusingly similar to Complainant’s trademarks because the pronunciation and the connotation are different.

 

            5.         Respondent has rights and legitimate interests in the disputed domain name because it has made demonstrable use or preparations to use the name in connection with a legitimate and bona fide offering of services.  This includes a business plan, a Private Placement Memorandum, e-broadcasting web portal product specifications, and the initial development of the web portal.

 

            6.         Respondent has registered and is planning to use the BROADECOM domain name in good faith.

 

            7.         Respondent will not use the disputed domain name in the communication semiconductor business, but in the electronic broadcasting field.  The BROADCOM and BROADECOM names are not phonetically equivalent, as Econ (for economy) and Ecom (for e-commerce) and Bay and EBAY are not phonetically equivalent.  The “e” is not mute and there is an extra syllable.

 

            8.         Respondent has no intent whatever to harm Complainant’s business in any way or to benefit from Complainant’s mark or name, which have no brand image in Respondent’s industry.

 

C. Additional Submissions

            Complainant’s Additional Submission

            1.         Respondent states that it will begin to use its BROADECOM logo in the near future.  Actual use of this mark will result in infringement of Complainant’s BROADCOM mark, and such infringement undermines any assertion by Respondent that it has a legitimate right in the disputed domain name and it is evidence of bad faith.

 

            2.         Courts have routinely held that “likelihood of confusion” is the basic test of federal statutory trademark infringement.  In applying the likelihood of confusion test, courts have noted that “as the degree of similarity of the goods of the parties increases, ‘the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.’”  Fossil, Inc. v. Fossil Group, 49 U.S.P.Q.2d 1451 (T.T.AB. 1998) quoting in part from Century 21 Real Estate Corp. v. Century Life of America, 90 F.2d 23 U.S.P.Q.2d 1698, 1700 (Fed. Cir. 1992).

 

            3.         Due to (1) similarity of the proposed BROADECOM domain name and the BROADCOM mark and (2) the closely related lines of business of Respondent and Complainant, there is a likelihood of confusion between the BROADECOM and BROADCOM mark.

 

            4.         Respondent is engaging in a line of business that is sufficiently related to Complainant’s line of business to cause a likelihood of confusion.  Respondent is developing a communication broadcasting e-commerce portal which will allow users to communicate and send large amounts of date over the Internet.  Complainant is the leading provider of highly integrated silicon solutions that enable broadband communications and networking of voice, video and data services.  Using proprietary technologies and advance design methodologies, Complainant designs, develops and supplies complete system-on-chip solutions and related hardware and software applications for every major broadband communications market.  Thus, Respondent and Complainant are both involved in large scale communication and data transfer services over the Internet.

 

            5.         Respondent’s infringement of BROADCOM’s registered BROADCOM trademark in the United States is evidence of bad faith.

 

            Respondent’s Additional Submission

            1.         The disputed domain name is not an infringement of Complainant’s BROADCOM mark.  Respondent is selling a service that is in a different line of business.

 

            2.         Respondent is a business-to-business service (e-mail, fax, and SMS broadcasting) while Complainant is selling a product (semiconductor) sold under OEM-type agreements.

 

            3.         Respondent’s customers are home offices and small businesses while Complainant’s customers are PC and peripherals (Device) manufacturers.

 

            4.         Respondent does not attempt in any way to use the Complainant’s trademark or to confuse Complainant’s customers:  BROADCOM is in ALL CAP while BroadEcom is in lower cap, using the graphic “e” that is used to define any Internet access.  Colors and style are different.  The name itself is different:  three syllables, with the emphasis on e-com.  Broad is an abbreviation of broadcast, not broadband.

 

5.         Respondent sells its service under its own name through a web portal, while Complainant’s semiconductors are included in a PC or peripherals manufacturer’s device, in accordance with an OEM (Original Equipment Manufacturer) agreement.

 

6.         Because the Complainant has no consumer brand name, and because Respondent’s customers are not likely to buy any of the Complainant’s products, and because the pronunciation of the mark is different, the confusion of marks asserted by Complainant does not exist.

 

7.         Respondent will use BroadEcom as a service company selling broadcasting solutions over the Internet, and will have nothing in common with a broadband chipset manufacturer that has no brand name with BroadEcom customers, i.e., home offices and small businesses.  Respondent is willing to modify its logo to make sure that the domain name is correctly pronounced Broad-ECOM.

 

FINDINGS AND CONCLUSIONS

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

 

      The gravamen of Complainant’s complaint is that Respondent by registering the disputed domain name has infringed Complainant’s long-established trademark.

 

      Professor McCarthy teaches us that the keystone of common law and statutory trademark infringement is the “likelihood of confusion,” and so it is here.[1]        The Panelist, however, finds that there is no likelihood of confusion, i.e., the disputed domain name and Complainant’s mark are not confusingly similar for the reasons set forth, infra.

 

      Professor McCarthy refers to the 1983 Restatement of Torts, Section 731, which listed nine foundational factors to be considered which have been utilized in both competitive and non-competitive cases.[2]  These factors have been used by each of the various Federal Circuit Courts to formulate their own list of factors.[3]

 

The 1938 Restatement factors are:

 

1.                  The likelihood that the actor’s goods, services or business will be mistaken for those of the other;

2.                  The likelihood that the other may expand his business so as to compete with the actor;

3.                  The extent to which the goods or services of the actor and those of the other have common purchasers or users;

4.                  The extent to which the goods or services of the actor and those of the other are marketed through the same channels;

5.                  The relation between the functions of the goods or services of the actor and those of the other;

6.                  The degree of distinctiveness of the trademark or trade name;

7.                  The degree of attention usually given to trade symbols in the purchase of goods or services of the actor and those of the other;

8.                  The length of time during which the actor has used the designation;

9.                  The intent of the actor in adopting and using the designation.

 

      In Dreamworks Production Group, Inc. v. SKG Studio (9^th Cir. 1998) 142 F.3d 1127, Judge Kozinski, in his usual droll manner, said (at 1129):

 

The test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.  In AMF Inc. v. Sleekcraft Boat 599 F.2d 341, 348-49 (9^th Cir. 1979), we listed eight factors to facilitate the inquiry:  (1) strength of the mark; (2) proximity or relatedness of the goods; (3) similarity of sight, sound and meaning; (4) evidence of actual confusion; (5) marketing channels; (6) type of goods and purchaser care; (7) intent; and (8) likelihood of expansion.  The factors should not be rigidly weighed; we do not count beans.  ‘Rather, the factors are intended to guide the court in assessing the basic question of likelihood of confusion.’  Gallo Winery, 967 F.2d at 1290.[4]

 

      We begin with the knowledge that believability of a witness is difficult to ascertain absent confrontation of the witness at a hearing where testimony is taken.[5]     Nevertheless, we must attempt to apply the Restatement and the Sleekcraft factors.

 

      With respect to Restatement Factor One, it is found that one party’s good, services or business will not be mistaken for the other.

 

      With respect to Restatement Factor Two, there is no evidence that there will be expansion by Respondent to compete with the Complainant.

 

      With respect to Restatement Factor Three, Complainant produces and sells articles to major computer companies, while Respondent sells only services to small businesses and individuals.  They, accordingly, do not normally have common purchasers or consumers.

 

      With respect to Restatement Factor Four, the evidence is that Complainant’s products are marketed by contract, while Respondent’s services are marketed on the Internet.  Obviously, the same channels are not being utilized.

 

      With respect to Restatement Factor Five, the functions of the goods and services of the parties are completely different.

 

      With respect to the distinctiveness of the trademark, which is Restatement Factor Six, it is not really distinctive because the term “broad” is commonly used.

 

      The evidence is that scant attention to trade symbols is given by the major purchasers of Complainant’s products, because they are seeking quality.

 

      Of course, Complainant has used its trademark far longer than the registration of the disputed domain name by Respondent, and, thus, Restatement Factor Eight favors Complainant.

 

      Accepting Respondent’s pledge, it has not and will not harm Complainant’s business.  Thus, in the context of Restatement Factor Nine, we must find that Respondent has not acted in bad faith and will not so act.

 

      With respect to the Sleekcraft factors, we assume that the mark is strong (1); however, the goods and services of the parties are not related (2); there is similarity of sight and sound, but not of meaning (3); there is no evidence of actual confusion (4); the marketing channels of the parties are different (5); the types of goods and services marketed by the parties are not the same or really related (6); Respondent asserts that it has no intent whatever now or in the future to harm Complainant (7); and, finally, there is no evidence that Respondent will expand into being a competitor of Complainant (8).

 

      Thus, whether analyzing the evidence utilizing either the Restatement factors or the Sleekcraft factors, or both, the overwhelming result is that the disputed domain name is not confusingly similar to Complainant’s mark, nor is Complainant’s mark being infringed.  Reasonably prudent customers of each party are not likely to be confused as to the origin of the goods or services bearing one of the marks.

 

      Having reached the conclusion that Complainant has not demonstrated “confusingly similar,” one of the triad factors it must establish, it is not necessary for the Panelist to consider “rights and legitimate interests” and “registrations and use in bad faith.”

 

DECISION

Having not established all three elements required under ICANN Policy, the Panel concludes that relief sought by Complainant shall be and the same is DENIED.

 

 

 

 

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: March 27, 2003

 

 

 

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