DECISION

Broadcom Corporation v. Drew C. Cummings

Claim Number: FA0110000100707

PARTIES

Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is Drew C. Cummings, Simi Valley, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <broadcomtv.net> and <broadcomtv.com> registered with Network Solutions.

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.

Judge Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 19, 2001; the Forum received a hard copy of the Complaint on October 19, 2001.

On October 23, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names <broadcomtv.net> and <broadcomtv.com> are registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 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 October 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 13, 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@broadcomtv.net, postmaster@broadcomtv.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 November 27, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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 the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <broadcomtv.com> and <broadcomtv.net> domain names are confusingly similar to Complainant's BROADCOM mark.

Respondent has no rights or legitimate interests in <broadcomtv.com> and <broadcomtv.net> domain names.

Respondent registered the disputed domain names in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Since 1994, Complainant has used the BROADCOM mark continuously in relation to computer hardware, software, integrated circuits, computers and broadband communications.  Complainant designs, develops, and supplies integrated circuits for a number of broadband communication markets including cable modems, direct broadcast satellite and other networks.  All of Complainant's services are associated with the BROADCOM trademark.

Complainant owns three trademark registrations for the BROADCOM mark: No. 2,132,930, No. 2,392,925, No. 2.326,387.  Currently Complainant has pending trademark applications for variations of the BROADCOM mark.

Respondent registered the disputed domain name on September 25, 2001.  The Respondent has not used the disputed domain name.

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

Respondent's domain names are confusingly similar to Complainant's BROADCOM mark.  The disputed domain names <broadcomtv.com> and <broadcomtv.net> merely add the generic suffix "tv" to the entirety of Complainant's mark.  The use of a generic suffix or word which is descriptive of the business of the Complainant does not defeat a claim of confusing similarity.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to Complainant’s BROADCOM mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interests in the <broadcomtv.com> and <broadcomtv.net> domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant.  See 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”).

There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <broadcomtv.com> or <broadcomtv.net> domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

Furthermore, based on the fame of Complainant's BROADCOM mark, even if Respondent had been actively using the domain name to offer bona fide goods or services, or a legitimate noncommercial or fair use it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name.  Any use by Respondent of the <broadcomtv.com> or <broadcomtv.net> domain names would be an opportunistic attempt to attract customer's via Complainant's famous mark.  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).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The <broadcomtv.com> and <broadcomtv.net> domain names are confusing similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the confusingly similar domain names is evidence of bad faith.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Furthermore, because of the famous and distinctive nature of Complainant's BROADCOM mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <broadcomtv.com> and <broadcomtv.net> domain names. See 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); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

Respondent registered the disputed domain name in order to prevent Complainant from using its BROADCOM mark in the corresponding domain names <broadcomtv.com> and <broadcomtv.net>.  See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name (by Respondent that incorporates another’s trademark) goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 name <broadcomtv.com> and <broadcomtv.net>  be transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: November 29, 2001

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