Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Broadcom Corporation, Irvine, CA, USA ("Complainant") represented by Gary J. Nelson, of Christie, Parker & Hale LLP. The Respondent is Corporategamer.com, Aliso Viejo, CA, USA ("Respondent").

The domain name at issue is "broadcomcorporation.com" registered with NamesDirect.com.

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 a panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 4, 2001; the Forum received a hard copy of the Complaint on January 8, 2001.

On January 9, 2001, NamesDirect.com confirmed by e-mail to the Forum that the domain name "broadcomcorporation.com" is registered with NamesDirect.com and that the Respondent is the current registrant of the name. NamesDirect.com has verified that Respondent is bound by the NamesDirect.com 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 January 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 30, 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@broadcomcorporation.com by e-mail.

On January 10, 2001, Respondent contacted the Forum by email indicating a willingness to transfer the domain name in question for $60.00, the registration fees originally paid to register the domain name. The Forum informed the Respondent that this could be considered a formal response if Respondent copied Complainant and indicated that the response was complete. No further communication was ever received from Respondent.

Having received no formal 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 February 5, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. 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 the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

Respondent submitted no formal response to the Forum.

Complainant is a provider of integrated circuits, computer hardware, and software in the field of digital broadband communications.

Complainant is the owner of three registered trademarks and five pending trademark applications with the United States Patent and Trademark Office. All of Complainant’s products and services are associated with its BROADCOM marks.

Complainant began using its tradename, BROADCOM CORPORATION, at least as early as November 1994 and has been using this tradename continuously ever since.

As of at least October 9, 2000, when an Internet user accessed the broadcomcorporation.com website, the user was redirected to Respondent’s web site.

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 formal 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. The Panel will also give consideration to Respondent’s informal e-mail sent on January 10, 2001, even though it was not submitted in accordance with the Policy.

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.

Complainant has rights in the BROADCOM mark based on its U.S. trademark registrations. In determining whether the domain name "broadcomcorporation.com" is confusingly similar to the Complainant’s marks, the Panel refers to trademark law where a mark may not be registered when "the use… would be likely to deceive or cause confusion…." The BROADCOM portion of Respondent’s domain name is the dominant portion of the domain name in question. The addition of the generic word, corporation, which describes Complainant’s business, does not avoid confusing similarity with Complainant’s BROADCOM mark. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that "Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant")

Accordingly, Policy ¶ 4(a)(i) is satisfied.

Respondent is known by the name Corporategamer.com and is not commonly known by any name containing Complainant’s BROADCOM mark. Policy ¶ 4(c)(ii). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding no rights or legitimate interests where the Respondent registered domain names which infringed upon the Complainant’s mark and had no resemblance to the Respondent’s business name where Respondent’s competing business was located one and a half blocks from the Complainant’s business).

As of at least October 9, 2000, when an Internet user accessed the broadcomcorporation.com website, the user was redirected to Respondent’s web site. Respondent is not making a legitimate or fair use of the domain name by using the Complainant’s mark to divert Internet users to its website. Such a use is obviously motivated by the commercial objective of increasing Internet traffic to its website. Thus, the Respondent has no rights under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar 9, 2000 ) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); North Coast Medical, Inc. v. Allegro Medical, FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its website); Household Int’l v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

Respondent’s willingness to transfer the domain name in question also indicates no rights or legitimate interests in the domain name. While the requested price was not in excess of out of pocket fees, the willingness to transfer the domain name to Complainant reveals that Respondent acknowledges Complainant’s bona fide rights in the domain name over any legitimate rights it could possibly hold in the domain name.

Accordingly, Policy ¶ 4(a)(ii) is satisfied.

Respondent’s willingness to transfer the domain name for $60.00 does not establish bad faith registration and use under Policy ¶ 4(b)(i). Policy ¶ 4(b)(i) refers to the existence of bad faith if the name was registered primarily for the purpose of selling the domain name registration to the Complainant as proprietor of the marks for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain name in dispute. Today, one can register a domain name for a very nominal amount of money. Costs associated with maintaining the domain name are also minimal. The Panel concludes that $60.00 is not "in excess of out-of-pocket costs directly related to the domain name." Thus, bad faith cannot be established under Policy ¶ 4(b)(i).

However, Respondent’s infringement of Complainant’s rights by linking an infringing domain name to another website establishes bad faith registration and use under ¶ 4(b)(iv).

Policy ¶ 4(b)(iv) states in part "…by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on your web site or location."

Respondent is using the domain name to re-direct Internet users to its own website. Such automatic re-targeting of broadcomcorporation.com to its own web site was designed to create a likelihood of confusion between itself and Complainant’s corporate name and trademarks as to the source, sponsorship, affiliation, or endorsement of its web site, and any corresponding goods/services. The Panel reasons that such conduct is to increase profits by increasing the number of website viewers. Based on this, the Panel concludes that the elements of Policy ¶ 4(b)(iv) are established. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website); Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. 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); America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent).

Accordingly, Policy ¶ 4(a)(iii) is satisfied.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "broadcomcorporation.com" be transferred from the Respondent to the Complainant.