DECISION

Broadcom Corporation v. Robert Wirth

Claim Number: FA0111000102713

PARTIES

Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is Robert Wirth, North Fort Myers, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <broadcommpc.com>, registered with Network Solutions, 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 November 30, 2001; the Forum received a hard copy of the Complaint on November 30, 2001.

On December 4, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <broadcommpc.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 December 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 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@broadcommpc.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 January 2, 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 the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <broadcommpc.com> is confusingly similar to marks in which Complainant has rights.

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

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

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant first registered its BROADCOM mark on the Principal Register of the United States Patent and Trademark Office (“USPTO”) on January 27, 1998 as Registration No. 2,132,930.  Complainant has used the mark continuously in commerce since at least 1994 in association with computer hardware and software products that recover and decode satellite signals, and, in particular, the design of integrated circuitry.  Complainant holds two other registered trademarks in BROADCOM and has at least five other trademark or service mark applications pending with the USPTO incorporating the word BROADCOM.

The acronym “MPC” is a generic abbreviation for “Multi Chip Project,” which is used within Complainant’s industry to describe the research and development effort associated with the fabrication of prototype integrated circuits.

Respondent registered the disputed domain name on November 1, 2001.  The disputed domain name has not been used by Respondent and, at the time the Complaint was filed, resolved only to a generic “under construction” page.

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.

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 and/or Confusingly Similar

Complainant has sufficiently established rights in the BROADCOM mark through registration with the USPTO. 

The disputed domain name is confusingly similar to Complainant’s mark.  The addition of the characters “mpc” to the mark does not defeat confusing similarity, but rather, increases the likelihood of confusion as users of the <broadcommpc.com> domain will likely associate the “mpc” term with Complainant’s business and mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors”).

The inclusion of “.com” in the disputed domain name has no bearing on the “confusingly similar” inquiry.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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 likewise without legal significance since use of a gTLD is required of domain name registrants").

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in the BROADCOM mark. Because Respondent has failed to submit a Response in this proceeding, the Panel may conclude that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

There is no evidence in the record to suggest that Respondent has used the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or that Respondent is commonly known as “broadcommpc” or “broadcommpc.com” pursuant to Policy ¶ 4(c)(ii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess); see also AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent alleged that it intended to use the domain name <attweb.com> for a company called “At the Web” but failed to provide any evidence as to the existence of the company). 

It also cannot be said that Respondent’s use of the disputed domain name to display an “under construction” page constitutes a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Media West-GSI, Inc., & Gannett Satellite Info. Network, Inc. v. Macafee, D2000-1032 (WIPO Oct. 6, 2000) (finding no rights and legitimate interests where Respondent was not commonly known by the BASEBALL WEEKLY mark and made no use of the domain name other than to state that the “web site for domain name BASEBALLWEEKLY.COM is under construction”).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied and that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

In determining whether the disputed domain name was registered and used in bad faith, the Panel may look to the “totality of the circumstances.”  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000).  The Panel may consider all evidence in the record, even if not specifically listed in ¶ 4(b) of the Policy as evidence of bad faith.  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).

The Respondent in this case intentionally registered a domain name that was likely to confuse Internet users and cause them to believe any site hosted at the domain name would be affiliated with or endorsed by Complainant.  This demonstrates bad faith under the Policy.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that 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 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’”).

Complainant has also asserted that Respondent registered the disputed domain name in bad faith to harass or exploit Complainant, the legitimate owner of the BROADCOM mark.  Because Respondent did not submit a Response to the Complaint, the Panel may presume Complainant’s contention to be true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Accordingly, 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 should be hereby granted.

Accordingly, it is Ordered that the <broadcommpc.com> domain name be transferred from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: January 11, 2002

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