Broadcom Corporation v. Domain Administrator
Claim Number: FA0511000601201
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 Domain Administrator (“Respondent”), 123 Main Street, Beverly Hills, CA 90210.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <broadscom.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 23, 2005.
On November 23, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <broadscom.com> domain name 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 November 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 20, 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@broadscom.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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:
Complainant is a global leader in highly integrated semiconductors for wired and wireless broadband communications.
Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BROADCOM mark, issued beginning in 1998.
Respondent registered the <broadscom.com> domain name on October 26, 2005.
Respondent has made no use of, and has shown no demonstrable preparations to use, the disputed domain name.
Respondent’s <broadscom.com> domain name is confusingly similar to Complainant’s BROADCOM mark.
Respondent does not have any rights or legitimate interests in the <broadscom.com> domain name.
Respondent registered and uses the <broadscom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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); 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 rights in the BROADCOM mark
through registration of the mark with the USPTO. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18,
2001); see also Innomed Tech., 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.”
Respondent’s
<broadscom.com> domain name is confusingly similar to
Complainant’s BROADCOM mark because Respondent’s domain name incorporates
Complainant’s mark in its entirety, and merely adds the letter “s” and the
generic top-level domain “.com.” The
Panel finds that such additions to Complainant’s registered mark do not negate
the confusingly similar character of Respondent’s domain name pursuant to
Policy ¶ 4(a)(i). See Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding
that a domain name which differs by only one letter from a trademark has a
greater tendency to be confusingly similar to the trademark where the trademark
is highly distinctive); see also
Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb.
Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com>
was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); 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 therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <broadscom.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have such rights or interests under Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the Panel is entitled to and does assume that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by the complainant that a respondent has no right or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant asserts, and Respondent does not deny, that Respondent has neither made use of the disputed domain name since registering it in October 2005 nor demonstrated preparations to use it. The Panel therefore finds that such nonuse is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where “Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names” and “no commercial use is being made of the names”); see also 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).
Moreover, Respondent has offered no evidence, and there is
no evidence in the record suggesting, that it is commonly known by the <broadscom.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <broadscom.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest 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 that the respondent there had no rights or legitimate interests
because it was neither commonly known by the disputed domain name nor employing
the name in connection with a legitimate or fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds
that Respondent’s passive holding and failure to come forward with demonstrable
preparations to use the <broadscom.com> domain name is evidence of bad faith registration
and use. See Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances,
for inactivity by the Respondent to amount to the domain name being used in bad
faith.”); see also 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).
There is also evidence that Respondent registered the
contested domain name with at least constructive knowledge of Complainant’s
rights in the BROADCOM mark by virtue of Complainant’s prior registration of
that mark with the USPTO. Registration
of a confusingly similar domain name despite such constructive knowledge
evidences bad faith registration and use of the domain name pursuant to Policy
¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested shall be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <broadscom.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 4, 2006
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