|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Broadcom Corporation v. Philippines Online c/o InfoDyne
Claim Number: FA0102000096683
PARTIES
The Complainant is Broadcom Corporation, Irvine, CA, USA ("Complainant") represented by Gary J. Nelson, of Christie, Parker, & Hale LLP. The Respondent is Philippines Online c/o Infodyne Inc., Makati City, PH ("Respondent") represented by Vicente Paolo B. Yu III.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "broadcomasia.com", registered with Network Solutions.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as a panelist in this proceeding.
The Honorable Charles K. McCotter as Panelist.
PROCEDURAL HISTORY
The Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 16, 2001; the Forum received a hard copy of the Complaint on February 26, 2001.
On February 20, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "broadcomasia.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that the Respondent is bound by the Network Solutions 5.0 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 February 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@broadcomasia.com by e-mail.
A timely response was received and determined to be complete on March 6, 2001.
On March 14, 2001, pursuant to the Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Charles K. McCotter, Jr. as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant. The Respondent, Infodyne, Inc., requests that the Panel dismiss the Complaint solely with respect to Infodyne for failure to implead the proper party, Broadcast Communication of Asia (Broadcomasia), and to cause the substitution of Broadcomasia as the real party in interest in this proceeding.
PARTIES’ CONTENTIONS
A. The Complainant
The Complainant contends that the domain name "broadcomasia" is identical or confusingly similar to its BROADCOM trademarks; that the unauthorized use of the BROADCOM trademark cannot result in rights or legitimate interests in the domain name; and that the domain name was registered and used in bad faith to attract Internet users to the Respondent’s web site creating a likelihood of confusion between the use of the domain name "broadcomasia" and the BROADCOM trademark.
B. The Respondent
The Respondent, Infodyne, Inc. says that it is not the real party in interest and moves to substitute Broadcomasia who Infodyne says actually owns the domain name. Because of the Motion, the Respondent did not respond to the Complaint.
FINDINGS
2. Broadcom is a leading provider of integrated circuits, computer hardware and software in the field of digital broadband communications. Broadcom provides highly integrated silicon solutions that enable broadband digital transmission of voice, video, and data.
Using proprietary technologies and advanced design methodologies, the company designs, develops and supplies integrated circuits for a number of the most significant broadband communications markets, including the markets for cable set-top boxes, cable modems, high-speed local, metropolitan and wide area networks, home networking, Voice over Internet Protocol (VoIP), residential broadband gateways, direct broadcast satellite and terrestrial digital broadcast, optical networking, digital subscriber lines (xDSL) and wireless communications.
Broadcom 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 key technology and products in emerging broadband markets such as digital subscriber line (DSL), fixed wireless, direct broadcast satellite and terrestrial digital broadcast.
Broadcom has strategic customer relationships with 3Com, Nortel-Bay, Cisco Systems, Motorola/General Instrument and Scientific-Atlanta.
Broadcom’s revenue for the year ending 1999, as reported in its Annual Report, was approximately $518,183,000. All of Broadcom’s products and services are associated with its BROADCOM trademark.
3. The Respondent, Infodyne, received the Complaint Notification and a copy of the Complaint on February 26, 2001. Infodyne filed the Motion to Substitute Broadcomasia contending that Infodyne is not the real party in interest. Infodyne says that the Motion should not be considered as the Response to the Complaint made by the real party in interest in accordance with ICANN Rule 5 and National Arbitration Forum’s Supplemental Rule 5.
4. The Respondent says that the domain name is owned, and the use thereof controlled, by the Broadcomasia. Infodyne undertook to register such domain name with Network Solutions on behalf of Broadcomasia pursuant to an oral contract between Infodyne and Broadcomasia. Infodyne’s registration of the domain name was erroneous in that Infodyne should have made the registration in the name of Broadcomasia. Infoydyne has notified Broadcomasia of the clerical error in the registration information. Infodyne is currently taking steps to transfer such registration from its name to that of BroadcomAsia. Infodyne has notified Broadcomasia of this Complaint. However, Broadcomasia has not filed a Response to the Complaint on its own or through Infodyne. Neither Infodyne nor Broadcomasia have filed a Request for Extension of Time to respond to the Complaint.
DISCUSSION
A. Motion for Substitution
The Respondent has submitted a Motion for Substitution, asserting that Broadcomasia is the real party in interest. The Respondent contends that it registered the domain name on behalf of Broadcomasia pursuant to an oral contract between the Respondent and Broadcomasia. The Respondent contends that its registration of the domain name is erroneous since the Respondent should have registered the domain name in Broadcomasia’s name. The Respondent claims that it is currently taking the steps to transfer the domain name to Broadcomasia, the correct owner of the domain name.
Once a domain name proceeding has been commenced, the Registrar places a hold on the domain name until a decision is issued pursuant to ICANN Policy ¶ 7. This policy is designed to prevent a respondent from evading the proceeding by transferring the domain name to a third party.
Since Network Solutions has not yet transferred the domain name to the third party (Broadcomasia), the Respondent is still the holder of the domain name for purposes of this proceeding. There is no obligation under the Policy to recognize any party other than the holder of the domain name registration. The Respondent is bound by the Network Solutions 5.0 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. Therefore, Infodyne, as holder of the domain name, is the real party in interest. The Motion to Substitute is Denied.
ICANN Rule 5(b)(i) requires a respondent to "respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the domain name. . . ." Since the Respondent has not filed a Response within the meaning of Rule 5(b)(i) nor requested an extension of time to respond under Rule 5(d), the Respondent is in default under Rule 14(a). Accordingly, the Panel shall proceed to a decision on the Complaint.
B. Elements
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."
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
The domain name registered by the Respondent "broadcomasia.com" is confusingly similar to the Complainant's mark, BROADCOM. The domain name incorporates the BROADCOM mark in an attempt to garner the mark’s goodwill and recognition. The combination of a geographic prefix or suffix to a mark does not prevent the domain name from being found confusingly similar. Net2phone Inc v. Netcall Sagl, D2000-0666 (WIPO Sept. 26, 2000) (finding as to the domain namenet2phone-europe.com> that "the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar."); See Cellular One Group v. Paul Brien, D2000-28 (WIPO Mar. 10, 2000) (finding that the registration of <cellularonechina.com> clearly violates Paragraph 4(a)(i) of the Policy in that CELLULARONE is unique and inherently distinctive coined word and that respondent had not been known as Cellularone or Cellularonechina.); CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that <cmgiasia.com> is confusingly similar to complainant's CMGI mark); and Wal-Mart Stores, Inc. v. Lars Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the domain name <wal-mart-europe.com> confusingly similar to complainant's mark, that persons perusing the website of <wal-mart-europe.com> could easily conclude that registrant of domain name was associated with Wal-Mart's operation in Europe. "Geographical destinations can be irrelevant to users of the Internet."). The Respondent's registration of the domain name "broadcomasia.com" with the addition of the suffix "asia" to a registered mark does not add any uniqueness or distinguishing features to the existing trademark BROADCOM.
In this case, confusion is also likely because the goods/services offered and promoted on the web site (e.g., equipment for recording, editing and otherwise manipulating voice and video imagery) are related to the goods/services provided by the Complainant. (e.g., equipment enabling the transmission of voice, video and other data).
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the domain name "broadcomasia.com". The Respondent’s unauthorized use of the BROADCOM trademark undermines any legitimate interest in the web site. See Household Int’l, Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (Employment of someone else’s well-known business name undermines any claims to a legitimate interest).
Registration and Use in Bad Faith
The Respondent registered and is using the domain name in bad faith. Although the Respondent registered the domain name for Broadcomasia, the Respondent remains the holder of the domain name and as such controls the use of the web site.
By permitting the use of the BROADCOMASIA designation on the web site, the Respondent allows an association with goods and services that are confusingly similar to those offered by the Complainant in association with its BROADCOM trademark. Infringement of trademark rights is evidence of bad faith. See Big Dog Holdings, Inc. v. Frank Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding bad faith where the Respondent was in clear violation of the Complainant’s trademark rights). Accordingly, the Respondent is intentionally using the domain name "broadcomasia.com" to attract Internet users to an on-line location by creating a likelihood of confusion with the Complainant’s mark BROADCOM as to the source, sponsorship, affiliation, or endorsement of the location or a product or service on the location. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (bad faith where the Respondent attracted users to its web site by using the Complainant’s trademark in its domain name).
Further, in the broadband communication field, the Complainant’s BROADCOM trademark is so obviously connected with the Complainant that use by someone with no connection with the Complainant suggests bad faith. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (the domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith). Just as the employment of a well-known business name in the broadband communication and transmission field for no particular good reason undermines any claim to a legitimate interest, it also supports an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner. See Household International, Inc. v. Cyntom Enterprises, supra (inferring that Respondent registered well-known business name with hopes of attracting the Complainant’s customers).
DECISION
Based upon the above findings and conclusions, I find in favor of the Complainant.
Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain name " broadcomasia.com".
Charles K. McCotter, Jr., Panelist
Dated: March 20, 2001
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2001/563.html