national arbitration forum

 

DECISION

 

Broadcom Corporation, a California Corporation v. shen zhen nanhuang electronics co.ltd / marvin

Claim Number: FA1303001491289

PARTIES

Complainant is Broadcom Corporation, a California Corporation (“Complainant”), represented by Susan M. Natland of Knobbe, Martens, Olson & Bear, LLP, California, USA.  Respondent is shen zhen nanhuang electronics co.ltd / marvin (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <broadcom-ic.com>, registered with Xin Net Technology Corporation.

 

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. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2013; the National Arbitration Forum received payment on April 15, 2013. The Complaint was submitted in both English and Chinese.

 

On May 2, 2013, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <broadcom-ic.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name.  Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 May 7, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 28, 2013 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@broadcom-ic.com. Also on May 7, 2013, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

  1. Complainant
    1. Complainant, Broadcom Corporation, a California corporation, is a major technological innovatory and global leader in the semiconductor and integrated circuit industry.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BROADCOM mark (e.g., Reg. No. 2,132,930, registered January 27, 1998). Complainant is also the owner of trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) for the BROADCOM mark (e.g., Reg. No. 1,321,169, registered October 7, 1999).
    3. Respondent cannot avoid the confusing similarity between the contested domain name and the BROADCOM trademark simply by tagging on the addition of the term “ic,” which is merely a generic abbreviation for “integrated circuits,” a key product offered by Complainant.
    4. Respondent has no rights or legitimate interests in respect of the domain name.

                                          i.    Respondent is not commonly known by the disputed domain name.

                                         ii.    Respondent’s domain name leads to a Chinese website for a Chinese company impersonating Complainant or pretending to be an authorized agent of Complainant.

    1. Respondent’s domain name was registered and is being used in bad faith.

                                          i.    Respondent has also registered several other domains incorporating the trademarks of third parties.

                                         ii.    Respondent’s domain name was registered and used in an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website located at the domain name by creating a likelihood of confusion with Complainant’s BROADCOM mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

                                        iii.    There is no question that Respondent was and is aware of the BROADCOM trademark, logo, and trade name prior to the registration of the domain name.

                                       iv.    Respondent is not an authorized distributor, is not authorized to register Complainant’s trademark in a domain name, and is clearly using the mark without permission to mislead consumers and falsely suggest a broader relationship with Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

Complainant asserts that it is a major technological innovator and global leader in the semiconductor and integrated circuit industry. Complainant contends that it is the owner of trademark registrations with the USPTO for the BROADCOM mark (e.g., Reg. No. 2,132,930, registered Jan. 27, 1998). Complainant also argues that it is the owner of trademark registrations with China’s SAIC for the BROADCOM mark (e.g., Reg. No. 1,321,169, registered Oct. 7, 1999). The Panel notes that Respondent appears to reside in China. The Panel finds that Complainant’s registration of the BROADCOM mark with China’s SAIC and the USPTO sufficiently demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant alleges that Respondent cannot avoid the confusing similarity between the contested domain name and the BROADCOM trademark simply by tagging on the addition of the term “ic,” which is merely a generic abbreviation for “integrated circuits,” which is a key product offered by Complainant. The Panel notes that Respondent adds a hyphen to Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com” to the domain name. The Panel holds that Respondent’s addition of a descriptive term, hyphen, and a gTLD does not negate confusing similarity under Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Accordingly, the Panel determines that Respondent’s <broadcom-ic.com> domain name is confusingly similar to Complainant’s BROADCOM mark under Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant contends that Respondent’s company name is “Shen Zen Nanhuang Electronics Co. Ltd.” Moreover, Complainant claims Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Complainant asserts that it has not authorized Respondent to use the BROADCOM mark in conjunction with a domain name. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M.Shanken Commc’ns v. ORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant argues that Respondent’s domain name leads to a Chinese website for a Chinese company impersonating Complainant or pretending to be an authorized agent of Complainant. Complainant alleges that Respondent’s website makes unauthorized references to “BROADCOM” and “BROADCOM CORPORATION” and goes on to suggest relationships with Complainant, when there is none. Complainant asserts that Respondent’s website states “The Broadcom agents Stock Processing Exports – South Queen Shenzhen Co., Ltd.,” which gives the false impression that Respondent is an authorized agent of Complainant, when it is not. Complainant also contends that Respondent’s website includes a copyright notice listing Respondent as well as extensive information on Complainant that would only normally be found on the corporate website of a company, not an authorized reseller. Complainant argues that Respondent’s website includes an unauthorized translation of Complainant’s website, including use of the same images and text. The Panel finds that Respondent is attempting to pass itself off as Complainant, which is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant contends that Respondent has also registered several other domains incorporating the trademarks of third parties. Complainant argues that a reverse WHOIS search shows that Respondent is the owner of the domain names <www.altera-ic.com>, <www.microsemi-ic.com>, <www.cypress-ic.com>, and <diodes-ic.com>. Complainant claims that Respondent’s registration of third-party marks is evidence of Respondent’s pattern of conduct and bad faith registration and use. However, the relationship of Respondent with third parties is not at issue in this dispute, and may not be used to infer bad faith as the Panel does not know the extent of the relationships or agreements between the third parties and Respondent. Therefore, the Panel disregards these arguments by Complainant.

 

Complainant alleges that Respondent’s domain name was registered and used in an intentional attempt to attract, for commercial gain, Internet users to Respondent’s website located at the domain name by creating a likelihood of confusion with Complainant’s BROADCOM mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant argues that Respondent’s domain name leads to a Chinese website for a Chinese company impersonating Complainant or pretending to be an authorized agent of Complainant. Complainant argues that Respondent’s registration and use of the domain name <broadcom-ic.com> as a platform to intentionally divert Internet traffic is highly likely to cause consumer confusion, mistake, or deception. The Panel holds that Respondent is using the disputed domain name to attract consumers to its own website for commercial gain pursuant to Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).

 

Complainant argues that Respondent is not an authorized distributor, is not authorized to register Complainant’s trademark in a domain name, and is clearly using the mark without permission to mislead consumers and falsely suggest a broader relationship with Complainant. Complainant argues that Respondent’s domain name leads to a Chinese website for a Chinese company impersonating Complainant or pretending to be an authorized agent of Complainant. Complainant alleges that Respondent’s website makes unauthorized references to “BROADCOM” and “BROADCOM CORPORATION” and goes on to suggest relationships with Complainant, when there is none. Complainant asserts that Respondent’s website states “The Broadcom agents Stock Processing Exports – South Queen Shenzhen Co., Ltd.,” which gives the false impression that Respondent is an authorized agent of Complainant, when it is not. Complainant argues that Respondent’s website includes an unauthorized translation of Complainant’s website, including use of the same images, and text. Complainant argues that the totality of the circumstances strongly and clearly demonstrates Respondent’s bad faith registration and use in the domain name. The Panel agrees that Respondent’s attempt to pass itself off as Complainant evidences bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

 

Complainant alleges that there is no question that Respondent was and is aware of the BROADCOM trademark, logo, and trade name prior to the registration of the domain name. Complainant contends that Respondent’s domain name <broadcom-ic.com> was registered and leads to a website referencing Complainant itself with information that makes it appear that Respondent is connected with Complainant. Therefore, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Complainant has proven this element.

 

DECISION

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

 

Accordingly, it is ORDERED that the <broadcom-ic.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret.), Panelist

Dated:  June 7, 2013

 

 

 

 

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