Avago Technologies International Sales Pte. Limited v. ERIC FRISBY / BROADCOM SECURITY NETWORKS
Claim Number: FA1903001836648
Complainant is Avago Technologies International Sales Pte. Limited (“Complainant”), represented by Susan M. Natland of Knobbe, Martens, Olson & Bear, LLP, California, USA. Respondent is ERIC FRISBY / BROADCOM SECURITY NETWORKS (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <broadcomsecurity.com> and <broadcomsecurity.net>, registered with GoDaddy.com, LLC.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2019; the Forum received payment on March 29, 2019.
On April 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <broadcomsecurity.com> and <broadcomsecurity.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2019 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@broadcomsecurity.com, postmaster@broadcomsecurity.net. Also on April 4, 2019, the 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.
A timely Response was received and determined to be complete on April 24, 2019.
On April 29, 2019 an Additional Submission was received by the Forum on behalf of Complainant. The submission was received timely and has been taken into account by the Panel in its decision.
On April 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a major technological innovator and global leader in the semiconductor and integrated circuit industry. Complainant has rights in the BROADCOM mark through its many trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,132,930, registered Jan. 27, 1998) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,321,169, registered Oct. 7, 1999). See Compl. Annex 12. Respondent’s <broadcomsecurity.com> and <broadcomsecurity.net> domain names are confusingly similar to Complainant’s BROADCOM mark as Respondent incorporates the mark in its entirety, merely adding the generic term “security” and a “.com” or “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <broadcomsecurity.com> and <broadcomsecurity.net> domain names. Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain names resolve to inactive websites. Further, Respondent’s willingness to transfer the disputed domain names to Complainant also demonstrates a lack of rights or legitimate interests.
Respondent registered and uses the <broadcomsecurity.com> and <broadcomsecurity.net> domain names in bad faith. Respondent also attempts to attract, for commercial gain, users to the disputed domain names by creating a likelihood of confusion as to source, sponsorship, endorsement, or affiliation of Respondent’s website. Respondent’s use of the disputed domain names also violates the executed Agreement with Complainant pursuant to which Respondent agreed to transfer the domain names to Complainant by September 13, 2012. However, Respondent attempted to have Complainant pay $12,000 and subsequently $75,000 to effect the transfer of the domain names. Respondent had actual knowledge of Complainant’s rights in the BROADCOM mark based on the fame and Respondent’s use of the mark at the time it registered the disputed domain names.
Complainant also argues that the doctrine of laches does not bar Complainant’s claim as: (1) laches do not apply to UDRP complaints, and (2) Complainant has been patiently attempting to resolve this dispute with Respondent outside of arbitration, but is now convinced that Respondent does not plan to cooperate based on their prior Agreement.
B. Respondent
Respondent made the following contentions.
My name is Eric Frisby and I own a company know only here in South Carolina as Broadcom Security along the domains associated with this business.
I also own <broadcamsecurity.com> which was acquired as result of threats and harassment from the attorneys that represent Broadcom Corp.
If I’m unable to keep this name and domains... I’m afraid I’ll sustain irreparable harm to my business may no longer be able to continue as its already taken a big toll. Just so you know... to my knowledge... My company has never ever been confused with ... and never ever will be confused with the company Broadcom Corp who's HQ is based in the Far East country of Singapore. I’m guessing that is why the South Carolina Secretary of State found no business name conflicts when they conducted the required search and legally authorized the use of Broadcom Security for the use of my home security alarm business. In fact... the name was derived from two words that together describe Broadcom Security’s “niche” in the home security marketplace. We only do business in a small area of central South Carolina in the United States Of America.
Broadcom security was named from the origin two words “Broad” and “com” and come together with Security. Together the meaning is “many varying methods of alarm signal communication to the central monitoring station.” Why you may ask? In a nut shell The name Broadcom Security was given at the time when most security alarm systems communicated with the central monitoring station by means of dial up modem at around 14.4kbps event although it was not communicating via IP... it was more like a fax machine. So when the new technology allowed for upgrading intrusion detection systems... or security alarm systems... with the capability of using other means of communications such as cellular.. so that the bad guys couldn’t simply cut phone lines to disable alarm comms to the police. In addition.. at that same time came another method of comms that utilized transmission via the internet (IP) which is much quicker that either cellular or dial up. Hence the selection of the name Broadcom Security or... many methods of alarm signal communications.
Broadcom Security is the natural shortened version and all my clients have never even mentioned any other “Broadcom”... let alone could or would possibly confuse us with a company out of Singapore
It’s probably for that same reason that Broadcom Corp did not already own any of the domains that I have legally registered to my company for 10+ years... and it also like it why those domains are not registered to their multi million dollar company so that no one else could use them.
And the only reason I signed the agreement to change Broadcom to Broadcam... (which was ridiculous..). and give up my domains was only under great duress and coercion by threat from attorneys that represent Broadcom Corp... of expensive legal battles that I could not afford to fight. That is... until I was told by my accountant that legally... they would not be able to force me to give up my domains so I have largely ignored them until this point. And if they had legal grounds to take them from me... they would certainly have done so in court where I am in South Carolina as opposed to using this venue as a last resort... almost 10 years later.
The bottom line is... I’m a very small business who’s ability to make a living depends on my good name and my good reputation that I’ve earned with hard work and sweat so that I could provide for my family... and today my company still relies and depends on keeping my good name along with its outstanding reputation and keeping my legally acquired domains intact.
I’m not out to hurt anyone and I couldn’t even if I was inclined to do so... if anything... I have increased the reputation of Broadcom in the event that anyone ever confused the two... which if that’s the case I’m unaware that anyone has ever been confused.
Even the logos of the two are not even close to the same. My logo has broadcast tower representing a cell tower and three emergency buttons that you might see on an alarm keypad that indicate to users ....that if they press to those buttons in the event of a specific emergency blue button) police, (red button)fire, or (green button) medical emergency... that the proper responders will be notified and help will be on the way. Everyone who uses an alarm system knows what those buttons are for.
My guess is... these attorneys feel a need to justify their high dollar retainer by ruthlessly attacking anything and everyone who’s name or mark resembles their own... regardless if it has done no harm to their own business... and regardless of the fact that my companys’ name was acquired legally and was approved and issued to my company after an extensive name conflict search by the issuing entity, the South Carolina Secretary of State.
We just want to be left alone to conduct our business separate and apart from any other entity that may use a similar name. And if anyone were to ever confuse us with their company... which has never happened in the 10 years I’ve legally conducted business using this name... I would happily and graciously mention there is no connection whatsoever.
What’s the reason they already know that? I tell all potential clients the origin of the Broadcom name that I described to you above... as part of my sales presentation with every single potential client.
C. Complainant’s Additional Submission.
Complainant elaborated and expanded on it contentions, sought to rebut Respondent’s contentions and submitted that Respondent’s allegations of duress in entering into the contract of September 13, 2011 between the parties were false and unsupported.
1. Complainant is a Singapore company and the parent company of Broadcom Limited that is a major technological innovator and global leader in the semiconductor and integrated circuit industry.
2. Complainant has established its trademark rights in the BROADCOM mark through its many trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,132,930, registered Jan. 27, 1998) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,321,169, registered Oct. 7, 1999)
3. Respondent registered the <broadcomsecurity.com> and <broadcomsecurity.net> domain names on September 1, 2009.
4. The disputed domain names resolve to Respondent’s websites at www.broadcamsecurity.com and www.broadcamsecurity.net that promote Respondent’s company Broadcam Security LLC, a security products dealer and service oriented security systems integrator. There are no facts that give rise to Respondent having a right or legitimate interest in the disputed domain names.
5. The disputed domain names have been registered and used in circumstances showing that they were registered and used in bad faith.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BROADCOM mark based upon registration of the mark with the USPTO (e.g., Reg. No. 2,132,930, registered Jan. 27, 1998) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,321,169, registered Oct. 7, 1999). See Compl. Annex 12. Registration of a mark with multiple trademark offices, including the USPTO and SAIC, is sufficient to establish rights in that mark. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the BROADCOM mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s BROADCOM mark. Complainant argues that the <broadcomsecurity.com> and <broadcomsecurity.net> domain names are confusingly similar to the BROADCOM mark, as the domain names incorporate the mark in its entirety, along with the generic word “security” and the “.com” or “.net” gTLD. Such changes are not sufficient to distinguish a domain name from a trademark incorporated in a domain name for the purposes of a Policy ¶ 4(a)(i) analysis. This is particularly so when, as in the present case, the generic word encapsulates one or more of the activities of the trademark owner. It is apparent on the evidence that Complainant’s activities are in the security field as well as others. Accordingly, an internet user would naturally assume that the domain names were official domain names of Complainant dealing with its security activities. Clearly, this does not negate the confusing similarity with Complainant’s trademark, but enhances it. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel therefore determines that the <broadcomsecurity.com> and <broadcomsecurity.net> domain names are confusingly similar to the BROADCOM mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s BROADCOM trademark and to use it in its domain names, adding the generic word “security” that does not negate the confusing similarity with Complainant’s trademark;
(b)Respondent registered the <broadcomsecurity.com> and <broadcomsecurity.net> domain names on September 1, 2009;
(c)The disputed domain names resolve to Respondent’s own website that promotes Broadcam Security LLC, a security products dealer and service oriented security systems integrator; that company was formerly Broadcom Security, to which the disputed domain names then resolved; however, upon entering the website of Broadcam Security LLC, the internet user is now redirected to www.broadcamsecurity.com and www.broadcamsecurity.net. Respondent is thus using the domain names incorporating Complainant’s trademark to promote his own company and websites. That is misleading and cannot give rise to a right or legitimate interest in the disputed domain names;
(d)Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant submits that Respondent has no rights or legitimate interests in the <broadcomsecurity.com> and <broadcomsecurity.net> domain names as when the current dispute over the domain names arose, the parties entered into a contract in writing dated September 13, 2011. That contract provided, inter alia that by September 13, 2012, Respondent was to have assigned the disputed domain names to Complainant. The evidence is that, in breach of the contract, the domain names have not been so assigned. The Panel has examined the contract to assess its tenor and provisions. Having done so, the Panel finds that there is no doubt that from September 13, 2012, if not before, Respondent has had no rights or legitimate interests in the domain names and that it has no rights or legitimate interests in them at the present;
(f)It is apparent that the domain names contain Complainant’s famous trademark and that they resolve to wesbites that promote Broadcam Security LLC, a security products dealer and service oriented security systems integrator that could be confused with Complainant because of their mutual involvement in security. That clearly negates any possibility of Respondent having any rights or legitimate interest in the domain names. Moreover, quite apart from the contract between the parties referred to above, Respondent is using Complainant’s trademark to promote his own business. That, likewise, negates any possibility that Respondent has any rights or legitimate interest in the domain names. The Panel therefore finds Respondent does not have any rights or legitimate interests in the domain names per Policy ¶¶ 4(c)(i) or (iii);
(g)Complainant provides a copy of an email and a memo of a voicemail in which Respondent asks for $12,000 and $75,000 to effect the transfer of the domain names. See Compl. Annexes 10 and 11. Again, as the domain names contain Complainant’s trademark, this must negate any possibility of Respondent having any rights or legitimate interest in the domain names. The Panel therefore finds Respondent has no rights or legitimate interests in the disputed domain names.
All of these matters show that Complainant has made out a prima facie case and it now falls to the Panel see if Respondent has rebutted that case.
Respondent’s submissions in that regard have already been set out above and it is not necessary to repeat them here. The Panel will, however, make comments on the most important points made.
First, Respondent submits that his is a small business operating in only one part of one State of the US and that consequently there can be no confusion between the domain names and Respondent’s business. The Panel understands that argument, but the difficulty in allowing it to influence the outcome of this case is that there is only one internet and that it operates internationally. Accordingly, there is a real danger that internet users, no matter where they may be, will see and use the disputed domain names and conclude that the websites to which they lead are in fact Complainant’s websites or that they operate with approval of Complainant. The Policy under which this proceeding is conducted is designed to prevent that sort of confusion and damage from arising, even in the future and, accordingly, the domain names will have to be transferred to Complainant to avoid that confusion and damage from occurring.
Secondly, Respondent explains why the words Broadcom Security were chosen as his business name and as part of the domain names. The Panel also understands that reasoning. The difficulty here, however, is that BROADCOM is Complainant’s trademark, it came into existence before the domain names were registered and it has been recognized throughout the world as Complainant’s mark. There is therefore the danger of confusion with potential to do damage to the trademark and Complainant’s business and for the reasons given will have to be transferred to Complainant.
Having considered all of the evidence carefully, the Panel finds that Respondent has not shown that he has a right or legitimate interest in the two domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent‘s bad faith is demonstrated by its use of the <broadcomsecurity.com> and <broadcomsecurity.net> domain names to benefit commercially from confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Commercially benefiting from user confusion as the result of registering and using a domain name may demonstrate bad faith per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). The Panel notes that in the present case , the disputed domain names resolve to Respondent’s own website that promotes Broadcam Security LLC, a security products dealer and service oriented security systems integrator; that company was formerly Broadcom Security, to which the disputed domain names then resolved; however, upon entering the website of Broadcam Security LLC, the internet user is now redirected to www.broadcamsecurity.com and www.broadcamsecurity.net which must benefit Respondent commercially. Respondent is thus using the domain names incorporating Complainant’s trademark to promote his own company and websites. That is misleading and may as a result give rise to the very confusion that Policy ¶ 4(b)(iv) is designed to avoid. Respondent says that there is no evidence of any such confusion having occurred, but as has been pointed out earlier in this decision, there is a real danger that internet users, no matter where they may be, will see and use the disputed domain names and conclude that the websites to which they lead are in fact Complainant’s websites or that they operate with approval of Complainant. The Policy under which this proceeding is conducted is designed to prevent that sort of confusion and damage from arising, even in the future and, accordingly, the domain names will have to be transferred to Complainant to avoid that confusion and damage from occurring. The Panel therefore finds that the registration and use of the disputed domain names has been in bad faith as it is defined in the Policy and within the meaning of Policy ¶ 4(b)(iv).
Secondly, Complainant claims Respondent’s current use of the domain names is in breach of the executed Agreement between the parties already referred to. Violation of a licensing agreement may demonstrate bad faith under Policy ¶ 4(a)(iii). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (finding that the respondent’s use of the KIOTI mark within a domain name without express authorization from the complainant violated the terms of the respondent’s licensing agreement and evidenced bad faith use of the domain name). Complainant has provided a copy of the agreement of September 13, 2011 by which Respondent acknowledged Complainant’s interests in the domain names and agreed to assign them to Complainant by September 13, 2012. See Compl. Annexes 8 and 9. However, Respondent breached the agreement and failed to transfer the disputed domain names to Complainant by that date or at all. Moreover, Complainant provides a copy of an email and a memo of a voicemail in which Respondent asks for $12,000 and $75,000, to effect the transfer of the domain names. See Compl. Annexes 10 and 11. This request for money colors the conduct of the matter by Respondent as the domain names contain Complainant’s trademark. Therefore, the Panel finds that Respondent’s breach of this contract supports a finding of bad faith use per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that in light of the fame and notoriety of Complainant's BROADCOM mark, Respondent must have registered the <broadcomsecurity.com> and <broadcomsecurity.net> domain names with actual knowledge of Complainant's rights in the mark and that consequently Respondent must have known when he registered the domain names that he was using Complainant’s trademark and that he intended to use it for his own benefit. Actual knowledge is evidence of bad faith registration under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel therefore finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the domain names in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the BROADCOM mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
LACHES
Complainant also argues that this proceeding should not be barred or prejudiced on the grounds of laches or delay in bringing the proceeding, on the grounds that laches does not apply in UDRP proceedings and that Complainant has been patiently trying to resolve this dispute to enforce the prior Agreement. Opinions differ on the application of laches to UDRP proceedings. Fortunately, the issue does not have to be resolved here as, even if the principle is available, the present case is, in all the circumstances, not a suitable one for its application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <broadcomsecurity.com> and <broadcomsecurity.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 2, 2019
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