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 Domain Depot, North Hollywood, CA, USA ("Respondent").

The domain name at issue is <broadcomonline.com>, registered with Network Solutions.

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.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 15, 2001; the Forum received a hard copy of the Complaint on March 19, 2001.

On March 20, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <broadcomonline.com> is 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 4.0 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 March 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 10, 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@broadcomonline.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 April 16, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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.

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

A. Complainant

Complainant asserts that the domain name, <broadcomonline.com>, is confusingly similar to Complainant’s BROADCOM mark. Also, Respondent has no rights or legitimate interests in the disputed domain name. And finally, Respondent registered and used the domain name at issue in bad faith.

B. Respondent

Respondent has not disputed the contentions addressed in the Complaint.

Complainant has at least three registered United States trademarks and five United States trademark applications pending for numerous variations of its BROADCOM trademark. Complainant began using its BROADCOM trademark at least as early as November 1994 and has been using the mark continuously ever since its initial adoption.

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 technology and products in emerging broadband markets such as digital subscriber line (DSL), fixed wireless, direct broadcast satellite and terrestrial digital broadcast.

Respondent’s domain name was registered on August 30, 1999, and there is no web site being used in connection with the domain name.

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.

Respondent’s registered domain name, <broadcomonline.com>, is confusingly similar to Complainant’s registered BROADCOM trademarks. The "broadcom" portion of the domain name is identical to Complainant’s BROADCOM mark, the pronunciation is identical, and the connotation and commercial impression are identical. Moreover, Respondent cannot avoid the confusing similarity between its registered domain name and the BROADCOM trademarks simply by tagging on a generic word such as "online." See The Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that Respondent’s domain name <prudentialonline.com> is confusingly similar to Complainant’s PRUDENTIAL mark).

Therefore, the domain name <broadcomonline.com> is confusingly similar to Complainant’s mark, and Complainant has met the burden set forth under Policy 4(a)(i).

Respondent has made no demonstrable preparations to use the domain name, or a name corresponding to the domain name, in connection with a legitimate and bona fide offering of goods or services. Indeed, any actual use by Respondent of the contested domain name would be an infringement of Complainant’s rights in its BROADCOM trademarks. See Household Int’l, Inc. v. Cyntom Enter., 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).

Respondent is known by the name Domain Depot, has never been commonly known by the name "broadcom" or "broadcomonline," has not acquired trademark rights in this name, and has not been granted a license to use the name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Respondent is not making a legitimate noncommercial, or fair use, of the <broadcomonline.com> domain name. In fact, Respondent’s passive holding is indicative of a lack of rights or legitimate interests in the domain name. See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

Therefore, the Panel determines that Respondent has not established any rights or legitimate interests in the domain name, and that Complainant has met the burden set forth under Policy 4(a)(ii).

The fact that Respondent is passively holding the <broadcomonline.com> domain name is evidence of bad faith. See Northwest Racing Assoc. LP v. Quantu Mktg., FA 95506 (Nat. Arb. Forum Oct. 6, 2000) (finding that passive holding of <emeralddowns.com> is evidence of bad faith).

Also, Complainant’s BROADCOM trademarks are so obviously connected with Complainant that registration and use by someone with no connection with Complainant suggests bad faith. See Deutsche Bank AG v. Bruckner, D2000-0277 (WIPO May 30, 2000) (the domain name is so obviously connected with Complainant and its services that its very use by someone with no connection with Complainant suggests opportunistic bad faith).

Therefore, the Panel concludes that Respondent registered and used the domain name in bad faith, and that Complainant has established the burden set forth under Policy 4(a)(iii).

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 <broadcomonline.com> be transferred from Respondent to Complainant.