Generic Top Level Domain Name (gTLD) Decisions

DECISION

Broadcom Corporation v. BraodComm Integrations

Claim Number: FA0210000128699

PARTIES

Complainant is Broadcom Corporation, Irvine, CA, USA (“Complainant”) represented by Gary J. Nelson, of Christie Parker & Hale LLP.  Respondent is BraodComm Integrations, Petaling Jaya Selangor, MALAYSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

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

PANEL

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 24, 2002; the Forum received a hard copy of the Complaint on October 24, 2002.

On October 24, 2002, OnlineNIC.com, Inc. confirmed by e-mail to the Forum that the domain name <broad-comm.net> is registered with OnlineNIC.com, Inc. and that Respondent is the current registrant of the name.  OnlineNIC.com, Inc. has verified that Respondent is bound by the OnlineNIC.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 October 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 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-comm.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.

On December 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The  <broad-comm.net> domain name is confusingly similar to Complainant's BROADCOM mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response.

FINDINGS

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for BROADCOM including Registration Numbers 2,132,930 and 2,392,925.  Complainant uses its BROADCOM mark in relation to computer hardware and software for broadcast satellite systems, computer hardware for integrated circuits and software for controlling and using integrated circuits, communications hardware and computer networks.  Complainant has used its BROADCOM mark since 1994.  Complainant also holds two trademark registrations in Malaysia, Respondent’s place of domicile, for its BROADCOM mark.

Complainant is the leading provider of integrated circuits, as well as computer hardware and software in the field of broadband communications.  Complainant provides its products to 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, direct broadcast satellite, and digital subscriber lines.

Respondent registered the disputed domain name on August 7, 2002. Respondent has made no use of the disputed domain name other than to park it at a website consisting of the Registrar’s standard page for unused domain names and a generic advertisement for available domain name registrations.

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 through continuous use and registration with the United States Patent and Trademark Office that it has rights in the BROADCOM mark.

Respondent’s <broad-comm.net> domain name is confusingly similar to Complainant’s BROADCOM mark because it merely divides Complainant’s mark in two with the addition of a hyphen, and adds an extra “m” at the end.  The addition of a hyphen does not create a distinct mark because not only is the mark still visually similar to Complainant’s BROADCOM mark, but it is phonetically similar.  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 Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy). 

The addition of an extra “m” fails to alleviate any of the confusing features of the domain name because the domain name is still phonetically and visually similar to Complainant’s mark.  Therefore, Respondent’s domain name has no features capable of overcoming a claim of confusing similarity.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Respondent has failed to Respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  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); 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).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); 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).

Based on the fame of Complainant’s BROADCOM mark, any use by Respondent of <broad-comm.net> will result in Internet user confusion.  Respondent has not come forward with any evidence that it is using, or plans to use, the disputed domain name for any purpose, therefore, it may be inferred that it registered the disputed domain name in order to sell the registration rights.  Failure to use a domain name for any other purpose than to sell its registration rights is not considered to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain name registrations for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also 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).

Respondent has not come forward with a Response, and as a result there is no evidence on record to establish that it is commonly known as BROAD-COMM or <broad-comm.net>.  Respondent does not use the name in relation to the disputed domain name because it has not developed a website at the domain name.  In light of this lack of evidence, and the fame of Complainant’s mark, the Panel finds that Respondent has not established that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was a misspelling of a famous mark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because the domain name is confusingly similar to Complainant’s well-known BROADCOM mark, and Respondent has parked the domain name at its registrar’s website advertising the sale of domain name registrations, it can be inferred that Respondent registered the domain name with the intent to sell, rent or transfer the domain name registration.  The registration of a domain name with the intent to sell its registration is considered to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).

Furthermore, based on the fame of Complainant’s BROADCOM mark, as well as its trademark registrations in Malaysia, it can be inferred that Respondent had knowledge of Complainant’s mark when it registered the infringing domain name.  Registration of a domain name, confusingly similar to Complainant’s mark, despite actual or constructive knowledge of that mark is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  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 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").

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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 <broad-comm.net> be transferred from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: December 18, 2002

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