Broadcom Corporation v. T Broadous and
Broadcom Marketing & Trading, LLC
Claim
Number: FA0303000151547
Complainant is
Broadcom Corporation, Irvine, CA (“Complainant”) represented
by Gary J. Nelson of Christie, Parker & Hale LLP. Respondent
is T Broadous and Broadcom Marketing & Trading LLC, Tulsa, OK
(“Respondent”).
The
domain name at issue is <broadcom-telephone.com>, registered with Go
Daddy Software.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 25, 2003; the Forum received a hard copy of the
Complaint on March 26, 2003.
On
March 26, 2003, Go Daddy Software, confirmed by e-mail to the Forum that the
domain name <broadcom-telephone.com> is registered with Go Daddy
Software and that Respondent is the current registrant of the name. Go Daddy
Software verified that Respondent is bound by the Go Daddy Software registration
agreement and 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
March 27, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 16, 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@broadcom-telephone.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 26, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent,
<broadcom-telephone.com>, is confusingly similar to Complainant’s
BROADCOM mark.
2. Respondent has no rights to or legitimate
interests in the <broadcom-telephone.com> domain name.
3. Respondent registered and used the <broadcom-telephone.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the BROADCOM mark since 1994 in relation to its integrated circuits,
computer hardware, software, and digital broadband communication services. Complainant develops and supplies complete
“system-on-a-chip solutions” and related hardware and software applications for
every major broadband communications market.
Complainant
holds numerous trademarks for the BROADCOM mark registered with the United
States Patent and Trademark Office, including Registration Number 2,132,930 and
2,392,925 registered on November 7, 1994.
Respondent
registered the <broadcom-telephone.com> domain name February 24,
2003. Respondent has made no use of the
domain name since its registration.
Respondent submitted no evidence of a business plan and nothing to show
any other legitimate use of the domain name.
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."
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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 to 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.
Complainant
established in this proceeding that it has rights in the BROADCOM mark through
registration with the U.S. Patent and Trademark Office and by continuous use
since 1994.
The domain name
registered by Respondent, <broadcom-telephone.com>, is confusingly
similar to Complainant’s BROADCOM mark because it incorporates Complainant’s
entire mark and merely adds a hyphen and the generic term “telephone.” The addition of a generic term does not
create any distinct characteristics capable of overcoming a claim of confusing
similarity. 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 Complainant combined with a generic word
or term); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the subject domain name incorporates the
VIAGRA mark in its entirety, and deviates only by the addition of the word
“bomb,” the domain name is rendered confusingly similar to Complainant’s
mark). Moreover, use of a hyphen to
separate words in a domain name does not create distinguishable features, and
thus has no bearing on whether a domain name is identical or confusingly
similar. See Teleplace, Inc. v. De Oliveira, FA 95835
(Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names
<teleplace.com>, <tele-place.com>, and <theteleplace.com> are
confusingly similar to Complainant’s TELEPLACE trademark); see also Nintendo Of Am. Inc. v. This Domain Is For
Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com>
identical and confusingly similar to the Complainant’s GAME BOY mark, even
though the domain name is a combination of two descriptive words divided by a
hyphen).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established in this proceeding that it has rights to and legitimate interests
in the mark used by Respondent in the disputed domain name. Respondent did not
submit a Response in this proceeding.
Thus, the Panel is permitted to accept all reasonable allegations in the
Complaint as true and make inferences in support of allegations in the
Complaint. See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (failure to respond allows all reasonable inferences of fact in the
allegations of Complainant 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”).
Moreover, Respondent
did not invoke any circumstances to demonstrate that Respondent has any rights
and legitimate interests in the domain name.
When Complainant asserts a prima facie case against Respondent,
the burden of proof shifts to Respondent to show that it has rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
Respondent failed to invoke any circumstance that could demonstrate any rights
or legitimate interests in the domain name).
Respondent has
not established a website at the <broadcom-telephone.com> domain
name. Based on the fame of Complainant’s
mark the Panel finds that Respondent could make no conceivable use of the
disputed domain name that would not cause Internet user confusion. Thus, Respondent could make no use of the
domain name that would be considered 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). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the Respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before notice
of the domain name dispute, the domain name did not resolve to a website, and
the Respondent is not commonly known by the domain name).
The Panel finds,
based on the fame of Complainant’s BROADCOM mark, that Respondent is not
commonly known as BROADCOM-TELEPHONE or <broadcom-telephone.com>. Complainant’s mark is well-known and thus
even if Respondent were to come forward with evidence, Respondent would be hard
pressed to establish that it is commonly known by the disputed domain
name. Therefore, the Panel finds that
Respondent has no rights to or legitimate interests in the <broadcom-telephone.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Nike, Inc. v. B. B. de
Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate
interests where one “would be hard pressed to find a person who may show a
right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding
that Respondent is not commonly known by the mark contained in the domain name
where Complainant has not permitted Respondent to use the NOKIA mark and no
other facts or elements can justify prior rights or a legitimate connection to
the names “Nokia” and/or “wwwNokia”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleged that Respondent acted in bad faith. Based on the fame of Complainant’s
mark, the Panel may infer that Respondent knew or was on notice of
Complainant’s rights when it registered the infringing domain name <broadcom-telephone.com>. Registration of a domain name, despite
actual or constructive knowledge of Complainant’s rights, is evidence of bad
faith pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption
of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see
also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse").
The
domain name registered by Respondent is confusingly similar to Complainant’s
mark; any use by Respondent would cause Internet user confusion. Respondent intentionally attempted to
attract Internet users to its website by creating a likelihood of confusion
with Complainant’s BROADCOM mark. Thus,
the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad
faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain
name because “It makes no sense whatever to wait until it actually ‘uses’ the
name, when inevitably, when there is such use, it will create the confusion
described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A
v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
Respondent made no use of the domain name in question and there are no other
indications that Respondent could have registered and used the domain name in
question for any non-infringing purpose).
Thus,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <broadcom-telephone.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 9, 2003.
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