Broadcom
Corporation v. Innovate Media
Claim Number: FA0507000516906
Complainant
is Broadcom Corporation (“Complainant”),
represented by Gary J. Nelson, of Christie, Parker & Hale LLP, 350 West Colorado Boulevard, Suite 500, P.O. Box 7068, Pasadena,
CA 91109-7068. Respondent is Innovate Media (“Respondent”), 5 Jenner
#100, Irvine, CA 92618.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <broadcomblog.com>,
registered with Go Daddy Software, Inc.
The undersigned certifies that he or she has acted
independently and impartially and to the best of his or her knowledge has no
known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum electronically on July 15, 2005; the National Arbitration
Forum received a hard copy of the Complaint on July 18, 2005.
On July 15, 2005, Go Daddy Software, Inc. confirmed by e-mail
to the National Arbitration Forum that the domain name <broadcomblog.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, 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 July 19, 2005, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of August 8, 2005 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@broadcomblog.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
National Arbitration Forum transmitted to the parties a Notification of
Respondent Default.
On August 12, 2005, pursuant to Complainant's request to
have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Honorable Paul A. Dorf (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." 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.
Complainant requests that the domain name be transferred
from Respondent to Complainant.
A. Complainant makes
the following assertions:
1.
Respondent’s
<broadcomblog.com> domain name is confusingly similar to
Complainant’s BROADCOM mark.
2.
Respondent
does not have any rights or legitimate interests in the <broadcomblog.com>
domain name.
3.
Respondent
registered and used the <broadcomblog.com> domain name in bad
faith.
B. Respondent failed
to submit a Response in this proceeding.
Complainant,
Broadcom Corporation, is a global leader in highly integrated semiconductors
for wired and wireless broadband communications. Complainant 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 technology and products
in emerging broadband markets, such as digital subscriber line (DSL), fixed
wireless, direct broadcast satellite and terrestrial digital broadcast.
Complainant has at least five registered United States trademarks
registered with the United States Patent and Trademark Office (“USPTO”) (E.g.,
Reg. No. 2,392,925 issued November 7, 1994; Reg. No. 2,326,387 issued November
7, 1994). Complainant began using its BROADCOM trademark at least as early as
November 1994 and has been using the mark continuously and extensively in
interstate and international commerce.
Respondent
registered the <broadcomblog.com> domain name on June 9,
2005. Respondent’s domain name does not
resolve to an active website.
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 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.").
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.
Complainant
has established with extrinsic proof in this proceeding that it has rights in
the BROADCOM mark through registration with the USPTO and through continuous
use of the mark in commerce. See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
The
<broadcomblog.com> domain name is confusingly similar to
Complainant’s BROADCOM mark because the domain name incorporates Complainant’s
mark in its entirety and merely adds the common word “blog.” This change is not enough to overcome the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶
4(a)(i). 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 the complainant combined with a generic word or term); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000)
(finding the <westfieldshopping.com> domain name confusingly similar
because the WESTFIELD mark was the dominant element).
Furthermore,
Respondent’s <broadcomblog.com> domain name is confusingly similar
to Complainant’s BROADCOM mark because the domain name incorporates
Complainant’s mark in its entirety and deviates with the addition of the
generic top-level domain ‘.com.’ The
addition of a generic top-level domain does not negate the confusingly similar
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in
the <broadcomblog.com.>
domain name. When a complainant
establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove
that it has rights or legitimate interests.
Due to Respondent’s failure to respond to the Complaint, the Panel
infers that Respondent does not have rights or legitimate interests in the
disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that
the respondent does not have rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or legitimate
interests do exist); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Complainant
contends that Respondent is not making any use of the <broadcomblog.com>
domain name, as it does not resolve to an active website. Such nonuse cannot be considered a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor is it 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 the 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).
Furthermore,
Respondent has not offered any proof, and there is no indication in the record,
suggesting that Respondent is commonly known by the <broadcomblog.com>
domain name. Furthermore, Respondent
has neither permission nor a license to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the
respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
contends that Respondent registered the <broadcomblog.com> domain
name in bad faith pursuant to Policy
¶ 4(a)(iii) because Respondent has not made any use of the disputed domain name
since registering it. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent
made no use of the domain name or website that connects with the domain name,
and that passive holding of a domain name permits an inference of registration
and use in bad faith).
Furthermore,
Respondent registered the <broadcomblog.com> domain name with
actual or constructive knowledge of Complainant’s rights in the BROADCOM mark
due to Complainant’s registration of the mark with the United States Patent and
Trademark Office. Registration of a
domain name that is confusingly similar to another’s mark despite actual or
constructive knowledge of the mark holder’s rights in the mark is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when the respondent reasonably should have
been aware of the complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <broadcomblog.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul
A. Dorf (Ret.),Panelist
Dated: August 29, 2005
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