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Generic Top Level Domain Name (gTLD) Decisions |
Broadcom Corporation v. Broadcom GmbH
Claim Number: FA0204000112592
PARTIES
Complainant is Broadcom Corporation, Irvine, CA, USA
(“Complainant”) represented by Gary J.
Nelson, of Christie, Parker &
Hale LLP. Respondent is Broadcom GmbH, Industriegebiet
Brandweihe, GERMANY (“Respondent”) represented by Michael Duessel.
The domain name
at issue is <broadcom.biz>,
registered with Schlund + Partner AG.
The undersigned
certifies that she has acted independently and impartially and to the best of
her knowledge, has no known conflict
in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C., as Panelist.
Complainant has
standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as
it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 27, 2002; the Forum
received a hard copy of the Complaint on
May 1, 2002.
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 in compliance
with paragraph 2(a) of the Rules for the Start-up
Trademark Opposition Policy (the “STOP Rules”).
A timely Response
was received and determined to be complete on May 21, 2002.
Complainant’s
Additional Submission was timely received and determined to be complete on May
29, 2002.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed Anne M.
Wallace, Q.C. as the single Panelist.
In addition to
submissions referred to, the Panelist made certain rulings referred to in this
decision which rulings resulted in some
further representations by both
parties. These will be discussed below under Parties’ Contentions.
Transfer of the
domain name from Respondent to Complainant.
Complainant has three registered
United States trademarks and five United States trade mark applications pending
for the trademark
BROADCOM. Complainant also has European Union registrations
for the BROADCOM trademark. Date of first use of the BROADCOM trademark
in the
United States was November 1994. Complainant is in the business of providing
integrated circuits, computer hardware and software
in the field of digital
broadband communications. Complainant 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 subscriber lines and wireless
communications. Complainant reports
that its revenue for the year ending 2001
was $961,800,000. All of Complainant’s products and services are associated
with its BROADCOM
trademark.
Complainant submits that Respondent is
not the owner or beneficiary of a trade or service mark for BROADCOM.
Complainant has European
Community trademarks for BROADCOM which are
enforceable in every country in the European Community, including Respondent’s
home country,
Germany. Complainant claims Respondent has not shown any
demonstrable preparations to use the domain name or a name corresponding
to
BROADCOM in connection with a bona fide offering of goods and services before
notice of this dispute. Complainant claims Respondent
has not been commonly
known as BROADCOM. Complainant claims that Respondent’s business Broadcom GmbH
is a sham. Complainant’s Google
search for Broadcom GmbH produced no results.
The domain name connected with Respondent’s contact e-mail address,
<broadcom.de>,
redirects Internet users to an unrelated commercial web
hosting company. Complainant asserts that since neither Broadcom GmbH nor
<broadcom.biz> are in use by
Respondent, Respondent cannot be commonly known by that name.
Complainant further submits that even
if Respondent did make preparations to use the name, such use by Respondent
would be unlawful
because it would dilute Complainant’s mark.
In light of my findings below, I need
not deal with Complainant’s allegations of bad faith.
In its Response, Respondent
acknowledges that Complainant has rights in the trademark BROADCOM in relation
to computer hardware, integrated
circuits and software for integrated circuits,
electrical and scientific apparatus, paper goods and printed matter.
Respondent began
business using the name Broadcom GmbH in January of 2001. The company was
registered in the Country Court, City of
Weiden, Germany and has a regular
entry on the trademark register of the City of Weiden, Germany. Respondent
began using the internet
mail address <broadcom.de> in the year 2000. The
company has had a web site since 2000 as well. The web site has been
temporarily
unavailable because Respondent is relocating to a new business
building.
Respondent is in
the business of consulting, business development and direct marketing.
Respondent also works with equity stake and
provides waste management services.
Respondent’s business involves making business connections. Respondent chose
BROADCOM to stand
for broad, wide communication between companies. Respondent’s
business does not compete in any way with Complainant. As such, Respondent
argues that its use of BROADCOM in no way conflicts with Complainant’s
trademark.
Respondent
submitted several documents which were largely in the German language, which
documents purported to be the record of the
company registration in Germany and
business and banking documents evidencing the existence of the company and the
fact the company
does carry on business in Germany.
Respondent’s
business involves establishing and developing business contacts for which the
.biz domain name is appropriate. In 2002,
Respondent has established business
connections with companies in Hong Kong and Macau. Respondent plans to build up
an international
website in the English language, to get more international
recognition than the .de domain it also holds.
While
acknowledging Complainant’s mark, Respondent submits it has a legitimate
interest in the <broadcom.biz>
domain and that it was merely the “lucky winner” in the drawing for the domain
name.
Because of my
findings below, I need not address Respondent’s submissions on bad faith.
This dispute has
involved several additional submissions and some additional rulings from the
Panel. On May 28, 2002, the Forum received
a submission from Complainant.
As outlined above, Respondent had
submitted some exhibits which are in the German language. Complainant submitted
and this Panel agrees
that the language of this proceeding, pursuant to STOP
Rule 11(a) is English. Complainant further submits that in these circumstances
a certified translation of the documents should have been submitted.
Complainant, therefore, objected to the introduction of these
documents.
Respondent submitted that the
documents in question are scans of original correspondence and a certification
of Respondent’s corporate
name. Respondent argued that the documents show
letterheads of a bank and other companies with whom Respondent has conducted
business
and that a translation is not required to make those observations.
Respondent is not relying on the content of the documents, but
rather on their
existence. Nevertheless, Respondent requested permission to submit a certified
translation of the documents into
English.
I reviewed the parties’ submissions
and the documents in question. While the content of the documents is not in the
English language,
Respondent is correct that it is clear from the documents
that they are documents evidencing communications between Respondent and
others. The dates on the documents are also identifiable. I felt, however, that
it would not be fair to Complainant for the Panel
to rely on documents in a
language other than English without Complainant having had the opportunity to
review those documents in
detail. That being the case, I felt it was important
that Complainant and the Panel have access to an English translation. By my
Order of July 2, 2002, Respondent, therefore, was given seven days to submit
certified translations of the documents into the English
language. Complainant
was then given an additional four days from receipt of the translations to make
any additional arguments Complainant
wished to make with respect to those
documents.
Under the General Powers of the Panel,
STOP Rule 10, it is important that the parties be given a fair opportunity to
present their
case. For that to happen in this case, I felt the translation of
the documents must be provided so Complainant could properly respond
to
Respondent’s documents. Also, while the Panel is charged with the
responsibility to ensure that the proceeding takes place with
due expedition,
this situation was an exceptional circumstance which justified an extension of
the normal time fixed by the Rules.
On July 8, 2002, Respondent
submitted certified translations of three documents including the company
registration in the German County
Court, a bank statement and a supplier’s
invoice.
On July 12, 2002,
Complainant responded with several additional arguments. One of the documents
filed with Respondent’s initial response
was not translated. Complainant asks
that the Panel not consider that document (the “Crouset Document”) in making
its decision. I
have not considered that document. One of the translations, a
document from Baustoff-Keller appears to be a translation, not of the
document
originally submitted in evidence, but of another document. The dates and
invoice numbers differ from the original exhibit
to the translation.
Complainant
submitted that the purported English translation of the Baustoff document casts
serious doubts on the veracity of the
representations made by the Respondent in
its original Response because of discrepancies between Respondent’s alleged
business purpose
and the business purposes evidence from the English translated
document. Respondent says it is in the business of consulting, business
development and direct marketing. The invoice shows purchases of colored
concrete and mortar materials, which Complainant submits
do not reflect a
consulting and business development business.
Complainant also
questions the validity of the Respondent’s exhibit which reflects registration
of the company Broadcom GmbH with
the District Court of Weiden, Germany.
Complainant argues that this document cannot be relied on because it lacks any
officially
identifying information such as a Court’s official letterhead or the
official seal of the court. While the English translation has
the date along
with signature and seal of the Court, the registration document has no similar
certification. Complainant also questions
the validity of the signature that
does appear on the registration because of its placement on the document.
Complainant points out
that the original document does not have an official
date, registration number, address for the company, purpose of the company,
name of managing director or fully-liable partner and power of procuration.
Complainant says the German document does not, on its
face, resemble an
official registration of a company with a Court of Law, nor does it contain any
official self-authenticating indicia
of authenticity.
Complainant goes
on to argue that even if the documents are authentic, most of Respondent’s
evidence is irrelevant because Respondent
was not the owner or beneficiary of a
trade or service mark that is identical to the domain name before any notice of
the dispute.
Respondent had actual notice of Complainant’s IP claim in
September 2001. The Baustoff document is dated December 14, 2001, which
is
after Respondent received notice of Complainant’s IP claims.
Complainant’s
European Community registration for BROADCOM was registered January 22, 2001
thereby giving Respondent constructive
notice of Complainant’s rights.
Respondent’s exhibits are all dated after this time.
Upon receipt of
Complainant’s submissions with respect to the exhibits, on July 18, 2002, I
directed that Respondent be permitted
two days to reply to the submission. On
July 20, Respondent made its last submission. Respondent says that he forgot to
submit the
Crouzet document for translation. With respect to the Baustoff
document, Respondent submits that he accidentally gave a different
invoice to
the translator. He submits that Respondent has hundreds of invoices from
Baustoff. The invoices are for building materials
for Respondent’s new business
premises and were submitted to demonstrate that Respondent carries on business
and that suppliers tender
invoices to Respondent, Broadcom GmbH.
Respondent also
expressed a willingness to provide the additional translations. I have decided
that will not be allowed and that this
proceeding must come to an end.
Respondent
submitted that their evidence has demonstrated bona fide use of the company
name. Respondent began business in earnest
in January 2001. The name and
trademark was registered shortly thereafter. The official registration has been
provided and Respondent
asserts that this is the official document from the
Court in Weiden and that if Complainant questions the validity of the document,
they can check with the Court themselves for a fee of about $10 US. Respondent
is offended by the suggestion that the documents are
not authentic.
The
Panel finds that the domain name <broadcom.biz>
is identical to a trademark in which Complainant has rights. The Panel further
finds that Respondent has rights and legitimate interests
in the domain name.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following
three elements to obtain an order
that a domain name should be transferred:
(1) the domain
name is identical to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3) the domain
name has been registered or is being used in bad faith.
Due to the common
authority of the ICANN policy governing both the Uniform Domain Name Dispute
Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel will exercise
its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP
proceedings, a STOP Complaint may only be filed when the domain name in dispute
is identical to a trademark or service
mark for which a Complainant has
registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed
domain name that is identical to a trademark or service mark in which
a
Complainant asserts rights. The
existence of the “.biz” generic top-level domain (gTLD) in the disputed domain
name is not a factor for purposes of determining
that a disputed domain name is
not identical to the mark in which the Complainant asserts rights.
The evidence
filed by the Complainant does establish rights in the trademark BROADCOM. It
owns United States and European Union trademark
registrations for the trademark
and has used the mark since as early as November of 1994.
The domain name
in question, <broadcom.biz>,
is identical to Complainant’s mark within the meaning of the STOP Policy.
The
detail of Respondent’s submissions about its business is set out above and I
will not repeat it all here. Respondent has registered
the company name and
trademark Broadcom GmbH with the County Court in Weiden, Germany. This occurred
in March 2001. Respondent began
using <broadcom.de> for its Internet mail
in the year 2000, and began doing business using the BROADCOM name in January
2001.
I can find nothing in the verification of the company registration that
leads me to believe, on the face of it, that the document
is not an authentic
document of the Court in Weiden. Without evidence like verification from the
German authorities that the document
is not bona fide, I have no reason to
question the validity of the document.
I therefore accept the document as evidence of the existence and
registration of Broadcom GmbH. The evidence also establishes that
Respondent
was using <broadcom.de> as its internet mail address as early as the year
2000.
Both
the registration of the company and the use of the .de domain name pre-date the
September 2001 registration of Complainant’s
IP claim.
Complainant has rights in the
trademark BROADCOM in relation to computer hardware, integrated circuits and
software for integrated
circuits, electrical and scientific apparatus, paper
goods and printed matter. Respondent’s business is consulting, business
development
and direct marketing.
Respondent’s name Broadcom Gmbh
(“GmbH” translates “Limited”) is identical to both of the domain names
Respondent currently holds,
i.e., <broadcom.de> and <broadcom.biz>. There is no evidence before me to contradict
Respondent’s assertion that the name was chosen because of the nature of the
Respondent’s
business involving broad communications. While it is unclear from
the evidence whether Respondent’s registration in Weiden is more
than a company
registration and indeed is some form of trademark registration, it is clear
that Respondent was already using the
BROADCOM name in its business before it
received notice of this dispute. I am satisfied on the evidence before me that
Respondent’s
business is a legitimate business and that Respondent’s business
is different from the business carried on by Complainant and the
uses for which
Complainant has acquired trademark registrations for BROADCOM.
Lastly, even if Respondent has not yet
acquired any trademark or service marks in the name (a point on which I will
not specifically
rule in this case), Respondent has submitted sufficient
evidence to demonstrate that it is commonly known by the name BROADCOM.
In these circumstances, I am satisfied
that Respondent does have rights to and legitimate interests in the domain name
<broadcom.biz>.
In
light of my findings above, I need not deal with the allegations of bad faith.
DECISION
The
Complaint is hereby dismissed and subsequent challenges to this domain
name, as against the Respondent, under the STOP Policy shall not be
permitted against this domain name.
Anne M. Wallace, Q.C., Panelist
Dated: July 26, 2002
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