DECISION

Broadcom Corporation v. Gigxchange

Claim Number: FA0108000099072

PARTIES

Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is Gigxchange, Houston, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <broadcombrokers.com> and <broadcombrokers.net> registered with Dotster.

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.

James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 15, 2001; the Forum received a hard copy of the Complaint on August 15, 2001.

On August 15, 2001, Dotster confirmed by e-mail to the Forum that the domain names <broadcombrokers.com> and <broadcombrokers.net> are registered with Dotster and that Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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 August 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 5, 2001 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@broadcombrokers.com and postmaster@broadcombrokers.net 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 September 24, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody 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.”  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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

o Respondent’s registered domain names, <broadcombrokers.com> and <broadcombrokers.net>, are confusingly similar to the registered BROADCOM trademarks.

o Respondent has no rights or legitimate interest in the <broadcombrokers.com> and <broadcombrokers.net> domain names.

o Respondent has registered and is using the contested domain name in bad faith.

B. Respondent

Respondent submitted no response in this matter.

FINDINGS

At least the following trademark registrations and pending applications are owned by Complainant:

Complainant has at least three registered United States trademarks and five United States trademark applications pending for numerous variations of its BROADCOM trademark (the “BROADCOM trademarks”).  Complainant began using the BROADCOM trademarks at least as early as November 1994 and has been using the marks continuously ever since their initial adoption.  Complainant’s trademark rights in the BROADCOM trademarks were established long before Respondent registered <broadcombrokers.com> and <broadcombrokers.net> on July 19, 2001.

Complainant is a leading provider of integrated circuits, computer hardware, and software in the field of digital broadband communications.  Complainant provides highly integrated silicon solutions that enable broadband digital transmission of voice, video, and data.

Respondent has made no demonstrable preparations to use the domain names.  At the time the UDRP Complaint was filed, neither of the contested domain names resolved to a corresponding web site. 

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.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

In the field of digital high tech broadband communications, Complainant and the BROADCOM trademarks are well known.  Complainant has been the user of the BROADCOM trademarks since at least as early as November 7, 1994.  This reveals Complainant’s rights in the BROADCOM mark.

Respondent’s registered domain names, <broadcombrokers.com> and <broadcombrokers.net>, are confusingly similar to the registered BROADCOM trademarks.  The BROADCOM portion of the domain names and the BROADCOM trademarks are identical; the pronunciation is identical, and the connotation and commercial impression are identical.  Moreover, Respondent cannot avoid the confusing similarity between its registered domain names and the BROADCOM trademarks simply by tagging on a generic suffix such as “broker”.  See Broadcom Corp. v. Broadband Com. Networks, FA 97871 (Nat. Arb. Forum Aug. 3, 2001) (“domain names that incorporate another’s trademark and merely add a generic descriptor are still confusingly similar for the purposes of Policy par. 4(a)(i)”); Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combined the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business). 

Based on the above, the Panel determines that the elements set forth in Policy ¶ 4(a)(i) have been established.

Rights or Legitimate Interests

Respondent has no rights or legitimate interest in the <broadcombrokers.com> and <broadcombrokers.net> domain names.  Respondent has made no demonstrable preparations to use the domain names in connection with a legitimate non-commercial or bona fide offering of goods or services.    Therefore, Respondent cannot claim rights in the domain name under Policy ¶ 4(c)(i) or (iii).  E.g., Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).

In addition, Respondent is known by the name Gigxchange, has never been commonly known by the name broadcom or broadcombrokers, is not associated with the Complainant in any manner, and certainly has not acquired trademark rights in these names.  Therefore Respondent cannot claim rights in the domain name under Policy ¶4(c)(ii).  E.g., Bloomberg L.P. v. RusskayaReklama.com, Inc., FA 97745 (Nat. Arb. Forum July 30, 2001) (finding no rights in the domain names <elbloomberg.com> and <bloombergmichael.com>, where Respondent never was commonly known by the BLOOMBERG mark and never acquired a trademark or a service mark in such name to satisfy Policy ¶ 4(c)(ii)).

Further, any actual use by Respondent of the contested domain name would be an infringement of Broadcom’s rights in its famous and well known BROADCOM trademarks.  See Household International, Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (finding that use of someone else’s well-known business name undermines any claims to a legitimate interest).

The Panel concludes that the elements set forth in Policy ¶ 4(a)(ii) have been established. 

Registration and Use in Bad Faith

The fact that Respondent is passively holding the <broadcombrokers.com> and <broadcombrokers.net> domain names permits an inference of bad faith.  E.g., Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

Also, the BROADCOM trademarks are so obviously connected with the Complainant that use by someone with no connection with the Complainant suggests bad faith.  See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

Given the above, the Panel finds that the domain names were registered and used in bad faith, as required by Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain names <broadcombrokers.com> and <broadcombrokers.net> be transferred from Respondent to Complainant.

James A. Carmody, Panelist

Dated: October 1, 2001

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