Generic Top Level Domain Name (gTLD) Decisions

Complainant is Broadcom Corporation, Irvine, CA, USA ("Complainant") represented by Gary J. Nelson, of Christie, Parker & Hale LLP. Respondent is Broadcom Technologies, Seoul, Korea ("Respondent").

The domain name at issue is "broadcomtech.com" registered with Tucows.com, Inc.

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as a panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 31, 2001; the Forum received a hard copy of the Complaint on February 7, 2001.

On February 15, 2001, Tucows.com, Inc. confirmed by e-mail to the Forum that the domain name "broadcomtech.com" is registered with Tucows.com, Inc. and that the Respondent is the current registrant of the name. Tucows.com, Inc. has verified that Respondent is bound by the Tucows.com, 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 February 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 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@broadcomtech.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 March 20, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.

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

A. Complainant asserts the following:

B. Respondent

Respondent has failed to offer a submission for consideration by the Panel in this dispute.

Complainant owns trademark registrations and pending trademark applications with the United States Trademark and Patent Office as follows:

Complainant further owns the following Korean trademark registrations and pending Korean trademark applications:

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.

Using proprietary technologies and advanced design methodologies, Complainant 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.

Complainant 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.

Respondent registered the domain name in issue and is using it in association with a website promoting goods/services in the telecommunication field that are related to the goods/services offered by Complainant in association with its BROADCOM trademark.

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.

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 the Respondent is identical to or confusingly similar to a trademark or service mark in which Complainant has rights;

(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 contends that the domain name in issue is identical to or confusingly similar to its mark. Respondent has not contested this allegation. In forming the domain name, Respondent added the generic word "tech" to Complainant's Broadcom mark. Adding a generic word to an established and distinctive mark does not create a distinguishable domain name and does not defeat the mark holder’s rights in the mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that "[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy ¶ 4(a)(i) is satisfied).

Thus, the Panel finds that Complainant proved that the domain name in issue is identical to or confusingly similar to Complainant’s Broadcom mark. Policy ¶ 4(a)(i).

In support of its own rights to and interests in the mark, Complainant established that it has at least three registered United States trademarks, five pending United States trademark applications, three registered Korean trademarks and three pending Korean trademark applications for numerous variations of its BROADCOM trademark.

Complainant contends that Respondent has no rights or legitimate interests in the domain name and Respondent did not contest this allegation or provide any evidence to the contrary.

Nor has Respondent shown a bona fide or legitimate use of the domain name. Respondent’s use of the contested domain name appears to be with the intent to secure commercial gain through intentional diversion of Complainant’s consumers to Respondent’s web site. This conduct is not a bona fide or legitimate use of the domain name. Policy ¶ 4(c). See Big Dog Holdings, Inc. v. Frank Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own web site by using Complainant’s trademarks).

Thus, the Panel finds that Complainant has rights to and interests in the mark used to create the domain name at issue and that Respondent has no rights in the domain name. Policy ¶ 4(a)(ii).

Complainant contends that the domain name was registered and used in bad faith. Respondent has not contested this allegation. Respondent’s use of the Broadcom trademark as part of its domain name seems calculated to create a likelihood of confusion between Complainant and Respondent and to do so in order to result in commercial gain for Respondent. Confusion between Complainant and Respondent is likely because the goods and services offered and promoted on Respondent’s web site (e.g., the network field, improved Cable TV Integrated Manufacturing Techniques (CATV), New phone system (Smart phone), CDMA/PCS RF-fiber optic repeater, Optical fiber amplifiers, Integration (SI) and Multimedia and Wireless Communications) are either identical to or related to the goods and services provided by Complainant (e.g., equipment and design services for communications hardware and software and computer networks). See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the Respondent intentionally attempted to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his web-site as the Complainant).

Complainant is not the source, a sponsor, an affiliate or an endorser of Respondent’s web site or any corresponding goods/services. The Panel finds that Respondent registered and is using the domain name that was created using Complainant’s mark in bad faith. Policy ¶ 4(b) (iii and iv).

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 "broadcomtech.com" be transferred from Respondent to Complainant.