DECISION

Broadcom Corporation v. Ayers International Group, Inc.

Claim Number: FA0204000112562

PARTIES

Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is Ayers International Group, Inc., Staten Island, NY (“Respondent”) represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates, PC.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <broadcom-usa.com>, registered with Register.com.

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.

Hon. Charles A. Kuechenmeister (Ret.) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 29, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.

On May 2, 2002, Register.com confirmed by e-mail to the Forum that the domain name <broadcom-usa.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.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 May 2, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 2002 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@broadcom-usa.com by e-mail.

Respondent’s Submission was received on June 19, 2002, 28 days after the original deadline established for the Response.  Complainant’s Additional Submission was received after the deadline for submissions on June 24, 2002.  Respondent’s Additional Submission was also received after the deadline for submissions on June 26, 2002.

On July 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.  Respondent requested a three-member Panel but this request was denied as not timely made.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.  Complainant

Complainant is the owner of U.S. Trademark Registration Nos. 2,132,930, and 2,392,925, both for BROADCOM and both showing a date of first use of November 7, 1994, for computer hardware and software for digitally operating upon signals in a network system to recover the information represented by such signals, for recovering and decoding video and audio information from signals transmitted by a direct broadcast satellite, and computer hardware, integrated circuits and software for controlling and using integrated circuits.  A third mark, "BROADCOM and design," is registered as No. 2,326,387, showing a date of first use of November 7, 1994, for computer hardware, integrated circuits and software for controlling and using integrated circuits.  Complainant has used the BROADCOM mark in commerce in connection with the marketing and sale of its said products since 1994.

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, residential broadband gateways, direct broadcast satellite and terrestrial digital broadcast, optical networking, digital networking, digital subscriber lines and wireless communications. 

Complainant has strategic customer relationships with 3Com, Nortel-Bay, Cisco Systems, Motorola/General Instrument and Scientific-Atlanta.  Complainant's revenue for the year ending 2001, as reported in its On-line Annual Report, was approximately $961,800,000.00.  All of Complainant's products and services are associated with its BROADCOM trademark.

Respondent's domain name creates a likelihood of confusion with Complainant's BROADCOM trademark.  Respondents cannot avoid a finding of confusing similarity simply by tacking on a generic geographic identifier such as "‑usa," nor can they do so by tacking on the generic suffix ".com."

Respondents have made no demonstrable use or preparations to use <broad com‑usa.com>, or a name corresponding to it, in connection with a legitimate and bona fide offering of goods and services, but are simply squatting on the domain name.

Any actual use by Respondent of <broadcom‑usa.com> or the corresponding term BROADCOM would be an infringement of Complainant's rights in its BROADCOM trademark.  Such infringement forecloses any possibility of a legitimate use by Respondents.

Respondent is not commonly known by BROADCOM, but is instead commonly known by the name Ayers International Group, Inc.

Complainant has never licensed or otherwise authorized Respondent to use its BROADCOM trademark, or <broadcom‑usa.com>.

Respondent intentionally registered <broadcom‑usa.com> to prevent Complainant from using its BROADCOM trademark in a corresponding domain name (<broad com‑usa.com>) identifying the fact that Complainant's corporate headquarters is located in the United States.

In the broadband communication field, Complainant's trademark BROADCOM is so obviously connected with Complainant that use by someone with no connection to Complainant suggests bad faith.

Warehousing of a domain name that corresponds to a well known trademark such as BROADCOM, by itself, is evidence of bad faith.

B.  Respondent

Broadcom Voice and Data, Inc. ("Broadcom Voice and Data") was incorporated under that name in the State of New York on or about January 13, 1992.

The present owner of Broadcom Voice and Data is a Mr. Rosaleen O'Leary, who has been operating the business by the name of "Broadcom Voice and Data, Inc." since January of 1992, in the following activities:  contracting for voice and data service installations, cabling for LAN and WAN implementations on customer sites, and performing moves, adds and changes to client systems.

Broadcom Voice and Data requested Respondent to register the domain name <broadcom‑usa.com> on behalf of Broadcom Voice and Data, Inc. as a part of Respondent's comprehensive internet technology services to Broadcom Voice and Data.

Mr. Bryan Ayers has been operating Respondent's business under the name of Ayers International Group, Inc. since January of 1994.  In this capacity he has engaged in the following activities as a part of the operation of the business:  technology project management, technology consulting, network design and implementation, and internet consulting.  His business has provided comprehensive information technology and internet technology services to many companies, including Broadcom Voice and Data, Inc.

As part of its services to Broadcom Voice and Data, Respondent registered the domain name <broadcom‑usa.com> on behalf of Broadcom Voice and Data, Inc. and at the request of its owners.

Respondent has been actively preparing a website for <broadcom‑usa.com> for several months prior to May 2, 2002.

Mount Sinai Medical Center of New York City ("Mt. Sinai") is a client of Broadcom Voice and Data.  Broadcom Voice and Data, Inc. was requested by Mt. Sinai to register, prepare and operate a website which would include some capabilities that would assist the interaction of the medical center with Broadcom Voice and Data.  Staff of Mt. Sinai engaged in planning activities with Broadcom Voice and Data with respect to the contents and operation of the website.  Both the request and the planning activities occurred at least as early as February 2002.

Broadcom Voice and Data and Respondent have been engaged in planning activities for the website at least as early as March 2002.  Respondent has been actively engaged in the preparation of the website at least as early as April 2002.

Complainant's goods are dramatically different from the services provided by Broadcom Voice and Data, Inc.  There is thus no confusing similarity between Respondent's <broadcom‑usa.com> and Complainant's BROADCOM mark.

The continuing operations of Broadcom Voice and Data since 1992, including specific detailed planning and preparation of a website in conjunction with Mt. Sinai, the latter beginning at least as early as February 2002, demonstrate that Respondent has engaged in preparations to use the <broadcom‑usa.com> domain name in connection with a legitimate and bona fide offering of goods and services.

Neither Respondent nor any of its associates (1) registered or acquired the domain name primarily to sell, rent or otherwise transfer it to the Complainant or a competitor for valuable consideration in excess of the out-of-pocket costs directly related to the domain name, (2) registered the domain name to prevent Complainant from reflecting its mark in a corresponding domain name, (3) registered the domain name to disrupt the business of the Complainant or a competitor, or (4) attempted to attract for commercial gain internet users to their website or other online location by creating a likelihood of confusion with the mark of Complainant as to the source, sponsorship, affiliation or endorsement of such website or location or of a product or service on such website.

C.  Additional Submissions

Complainant filed an additional submission after the time for doing so expired.  Respondent objected to Complainant's additional submission but tendered one of its own and requested that it be considered if Complainant's were.  The Panel exercises its discretion to consider both additional submissions.

FINDINGS AND DISCUSSION

Respondent's Response was filed 28 days after the time allowed for doing so expired.  The Panel is mindful of the benefits of expedited resolution of domain name disputes, and had it received this case during that 28-day period it might well have declined to consider the Response.  The Panel received this case on July 12, however, with not only the Response but the two, also untimely additional submissions.  No delay or other harm will result from the Panel considering all of the late submissions and it elects to do so.

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 or Confusingly Similar  Policy ¶ 4(a)(i).

Complainant owns numerous U.S. Patent and Trademark Office (“USPTO”) registrations for its BROADCOM mark, including Reg. No. 2,132,930, Reg. No. 2,392,925, and Reg. No. 2,326,387, among others.  Complainant has been the exclusive user of the BROADCOM mark in the U.S. beginning as early as November 1994, and has been using the mark continuously ever since.

Respondent’s <broadcom-usa.com> domain name is confusingly similar to Complainant's BROADCOM trademark.  The dominant part of Respondent’s domain name reflects Complainant’s BROADCOM mark, and the addition of the geographic qualifier “-usa” fails to make the domain name distinct.  See Am. Online, Inc. v. Asian On-Line This Domain For Sale, FA 94636 (Nat. Arb. Forum May 17, 2000) (finding that the domain names, which consist of “ao-l” and geographic location are confusingly similar to Complainant’s mark); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also JVC Americas Corp. v. Macafee, CPR006 (CPR Nov. 10, 2000) (finding that the domain name registered by Respondent, <jvc-america.com>, is substantially similar to, and nearly identical to Complainant's JVC mark).

Likewise, the addition of a top-level domain name such as “.com” is irrelevant when determining whether a domain name is identical to Complainant’s mark.  See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Respondent asserts that the goods and services of the parties as represented by their respective marks are so different as to eliminate the possibility of confusion.  Where the products of the parties involved are not identical, the likelihood of confusion issue extends to whether the public would "probably assume" that the product or service represented by a name is associated with the source of a different product represented by a similar name or mark.  Scott Paper Co. v. Scott's Liquid Gold, Inc.[1978] USCA3 1009; , 589 F.2d 1225, 1229 (C.A. Del., 1978).  Similarity or dissimilarity of the products themselves is only one of several factors to be considered.  Others include (1) the strength of Plaintiff’s mark; (2) the degree of similarity between marks; (3) the relationship between parties’ channels of trade; (4) the relationship between parties’ advertising; (5) the degree of care exercised by relevant consumers; (6) evidence of actual confusion, and (7) the intent of the allegedly infringing user.  Id.; Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961).  Because the website under consideration by Respondents, Broadcom Voice and Data, and Mt. Sinai is not yet developed it is difficult to assess exactly how these parties intend to use <broadcom-usa.com> in connection with it.  Nevertheless, on balance the similarity in names coupled with the fact that an Internet presence is intended by the Respondent's group, leads the Panel to conclude that the names are and will be confusingly similar notwithstanding some difference in products or services.  Considering the strength of Complainant's BROADCOM mark in digital broadband communications, it is likely that Internet users will be attracted to the <broadcom-usa.com> site in the belief that it is affiliated with or has the endorsement of Complainant.

Based upon the foregoing, the Panel finds and determines that <broadcom-usa.com> is identical or confusingly similar to the mark BROADCOM, in which Complainant has rights.

Rights and Legitimate Interests   Policy ¶ 4(a)(ii).

Broadcom Voice and Data is not a Respondent.  According to the report from Register.com, the registrant of <broadcom-usa.com>, and thus the Respondent in these proceedings, is Ayers International Group, Inc.  Broadcom Voice and Data may have used the BROADCOM name in connection with its operations, but the only material involvement of Respondent with the mark BROADCOM was to register  <broadcom-usa.com> in its name.  It, not Broadcom Voice and Data, is the registrant for the name, and this case is determined upon that basis.  The authority asserted in Respondent's additional submission is distinguishable from this case.  In SMS Demag AG v. Seung‑Gon, D2000-1434 (WIPO Jan. 19, 2001), the parties agreed that the proper Respondent was an individual rather than the company in whose name he apparently registered the domain name.  In Chantelle v. Anhalt, D2001-1181 (WIPO Dec. 20, 2001), the corporate vice president who registered the domain in his own name rather than the company's was in business with his mother in that company.  Here, three separate and distinct entities, Broadcom Voice and Data, Mt. Sinai, and Respondent, related with each other only by a business association, were apparently to be involved in some way in the proposed website.  Respondent is engaged in Internet and IT business pursuits in its own right and as the registrant of <broadcom-usa.com> has the right to control its disposition and the uses to which it is put.

Complainant has not licensed or authorized Respondent in any other way to use either its mark BROADCOM or <broadcom-usa.com>.  Because Complainant's mark is internationally established and Respondent is not a licensee or authorized agent of Complainant, Respondent is prohibited from establishing rights or legitimate interests in the domain name under Policy ¶4(c)(ii).

Respondent has made no demonstrable use, or preparations to use, the <broadcom-usa.com> domain name in connection with a legitimate and bona fide offering of goods and services in its own right pursuant to Policy ¶4(c)(i).  Rather, Respondent has done nothing more than register it, purportedly for Broadcom Voice and Data, and has consulted with Broadcom Voice and Data about a website somehow involving Broadcom Voice and Data and Mt. Sinai.  This is insufficient to demonstrate any right or legitimate interest in respect of the domain name for Respondent.  See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the Respondent has not used the domain names in connection with any type of bona fide offering of goods and services).

Additionally, as Complainant points out, any actual use by Respondent of the disputed domain name would be an infringement of Complainant's statutory rights in its BROADCOM trademark.  Such resulting infringement forecloses any possibility of a legitimate use by Respondent as a matter of law.  If Respondent ever uses the <broadcom-usa.com> website it will be opportunistically benefiting and trading on Complainant’s established mark.  Such use is not in connection with a bona fide offering of goods or services under Policy ¶4(c)(i), nor does it represent a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii). See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Telstra Corp. Ltd. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18, 2000) (finding (i) the fact that Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with Complainant, demonstrate that Respondent lacks rights or legitimate interests in the domain name).

Respondent is not commonly known by the “Broadcom” name.  On the contrary, Respondent is commonly known by the names “Ayers International Group, Inc.” and perhaps “Bryan Ayers.”  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Based upon the foregoing, the Panel finds and determines that Respondent has no right or legitimate interest in respect of <broadcom-usa.com>.

Registration and Use in Bad Faith   Policy ¶ 4(a)(iii)

Because of the considerable and well-known presence of Complainant in the digital broadband communications industry, the general notoriety of its BROADCOM mark, and its registration of BROADCOM on the USPTO’s Principal Register, Respondent is charged with notice of Complainant’s preexisting rights in the BROADCOM mark.  Respondent’s pursuit of a registration of a domain name reflecting a mark in which Complainant had such clearly established rights at the time constitutes bad faith registration under Policy ¶4(a)(iii).  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

Notwithstanding the presence and history of Broadcom Voice and Data among Respondent's affiliates, the Respondents' registration of <broadcom-usa.com>, which is confusingly similar to Complainant’s established mark, represents an opportunistic attempt eventually to trade on the goodwill established by Complainant in its BROADCOM mark.  The Respondents' business purpose and the function and nature of the proposed website as described in the Response are unclear, but it appears from the affidavits attached to the Response that Respondent's registration of that domain at the request of Broadcom Voice and Data was part of a plan to register, prepare and operate a website for a business or commercial venture of some sort, and given that Respondent and Broadcom Voice and Data had either actual or constructive knowledge of Complainant's BROADCOM mark, it appears that Respondent registered <broadcom-usa.com> to use the fame of Complainant’s mark to the advantage of it and its affiliates in this undertaking.  The name they chose for their website will, for commercial gain, inevitably attract Internet users searching for Complainant’s products, and this evidences bad faith pursuant to Policy ¶4(b)(iv). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding 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”)

Based upon the foregoing, the Panel finds and determines that the Respondents registered and are using <broadcom-usa.com> in bad faith.

DECISION

Based upon the foregoing Findings and Discussion, the relief sought in the Complaint is granted.  The domain-name <broadcom-usa.com> is ordered transferred to Complainant.

Honorable Charles A. Kuechenmeister (Ret.)

Dated:  July 24, 2002

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