DECISION

Broadcom Corporation v. CreateMutex

Claim Number: FA0210000128711

PARTIES

Complainant is Broadcom Corporation, Irvine, CA, USA (“Complainant”) represented by Gary J. Nelson, of Christie Parker & Hale LLP.  Respondent is CreateMutex, Osaka, JAPAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <broad-com.net>, registered with TuCows, Inc.

PANEL

On December 9, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.  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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 25, 2002; the Forum received a hard copy of the Complaint on October 25, 2002.

On October 25, 2002, TuCows, Inc. confirmed by e-mail to the Forum that the domain name <broad-com.net> is registered with TuCows, Inc. and that Respondent is the current registrant of the name. TuCows, Inc. has verified that Respondent is bound by the TuCows, 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 October 31, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 20, 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@broad-com.net 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.

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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <broad-com.net> domain name is virtually identical to Complainant’s registered BROADCOM mark.

Respondent does not have any rights or legitimate interests in the <broad-com.net> domain name.

Respondent registered and used the <broad-com.net> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Broadcom Corporation, holds numerous registrations on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the BROADCOM family of marks (e.g. U.S. Reg. No. 2,132,930, registered January 27, 1998, first use in commerce on November 7, 1994). Complainant holds at least five trademark registrations in Japan for the same family of marks (e.g. Reg. No. 4,280,890, issued June 4, 1999).

Complainant uses its BROADCOM family of marks worldwide to denote its business of providing integrated circuits, computer hardware, and computer software in the field of digital broadband communications. As a designer, developer, and supplier of integrated circuits for a significant portion of the broadband communications market (e.g. cable modems, high-speed local, metropolitan, and wide-area networks, and digital subscriber lines), Complainant realized nearly a billion dollars in revenue in 2001.

Respondent, CreateMutex, registered the <broad-com.net> domain name on October 1, 2002. Respondent is not licensed or authorized by Complainant to make use of the BROADCOM mark for any purpose. Respondent has not made use of the disputed domain name since its registration.

DISCUSSION

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(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.

Identical and/or Confusingly Similar

Complainant has established rights in the registered       BROADCOM trademark through registration on the Principal Register of the USPTO as well as through continuous and widespread use of the mark worldwide.

Respondent’s <broad-com.net> domain name is confusingly similar to Complainant’s BROADCOM mark. Other than the inclusion of a hyphen between the two syllables of Complainant’s mark and the addition of the “.net” top-level domain, the disputed domian name is identical to Complainant’s mark. Neither of these differences prevent a finding of confusing similarity by the Panel. See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark).

Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Policy ¶¶ 4(c)(i)-(iii) list three circumstances illustrative of situations where a respondent would have rights or legitimate interests in a domain name. When a respondent has failed to respond to a Complaint, a showing by a complainant that none of these three circumstances are present is sufficient for that complainant to meet its burden under the Policy. At that point, the burden shifts to Respondent to rebut Complainant’s allegations. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

In these circumstances, Respondent’s failure to Respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent is not using the <broad-com.net> domain name in any fashion, and therefore by definition is not using it in conjunction with any bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Complainant’s uncontested allegations meet its burden for proving Respondent’s use of its domain name does not fall under either of these elements of the Policy. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name).

Respondent’s contact information states that it is known as “CreateMutex”, and no evidence supports a conclusion that it has ever been known as BROAD-COM or <broad-com.net>. In light of Respondent’s failure to offer any evidence to the contrary, the Panel finds that Respondent is not “commonly known by” the domain name under Policy ¶ 4(c)(ii). 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Policy paragraph 4(b) lists four examples of bad faith use and registration. This does not mean, however, that these four examples are the only situations warranting a finding of bad faith use and registration of a domain name by a respondent. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”).

An example of bad faith use and registration not enumerated within the Policy is registration of a domain name when Respondent had constructive or actual notice of Complainant’s mark prior to registering an infringing domain name. Complainant’s BROADCOM mark is registered in Japan, Respondent’s place of domicile, putting Respondent on constructive notice of Complainant’s rights in that mark.  This evidences bad faith use and registration of the disputed domain name by Respondent. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); 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).

Similarly, the notoriety and well-known character of Complainant’s distinctive BROADCOM mark lends additional evidence that Respondent registered and used the disputed domain name in bad faith, especially in light of the fact that the domain name and Complainant’s mark are virtually identical. Under circumstances such as these, actual knowledge of Complainant’s mark is not only likely, but Respondent would be hard pressed to find a situation where it could use its domain name in good faith. See 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”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).

In light of Respondent’s failure to rebut Complainant’s allegations that Respondent knew of Complainant’s mark when it registered and used its infringing domain name, the Panel will infer that Respondent’s actions were performed with full knowledge of Complainant’s rights in the BROADCOM mark, that Respondent has no good faith use planned for the domain name, and therefore Respondent registered and used the disputed domain name in bad faith. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) that Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Complainant has satisfied Policy ¶ 4(a)(iii).

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <broad-com.net> domain name be TRANSFERRED from Respondent to Complainant.

James P. Buchele Panelist

Dated: December 16, 2002

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