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Generic Top Level Domain Name (gTLD) Decisions |
Broadcom
Corporation v. Global Broadband Communications, LLC
Claim
Number: FA0202000104985
PARTIES
Complainant is Broadcom Corporation, Irvine, CA
(“Complainant”) represented by Gary J.
Nelson, of Christie, Parker &
Hale LLP. Respondent is Global Broadband Communications, LLC,
Tampa, FL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at
issue are <globalbroadcom.com> and <globalbroadcom.net>, registered with Enom, Inc.
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.
John J. Upchurch as
Panelist.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
22, 2002; the Forum received
a hard copy of the Complaint on February 25, 2002.
On February 25, 2002, Enom,
Inc. confirmed by e-mail to the Forum that the domain names <globalbroadcom.com> and <globalbroadcom.net> are registered with Enom, Inc. and that
Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom,
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 February 26, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”),
setting a deadline of March 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@globalbroadcom.com, and postmaster@globalbroadcom.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 March 25, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed John
J. Upchurch 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 names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The <globalbroadcom.com>
and <globalbroadcom.net> domain names are confusingly similar to
Complainant's BROADCOM mark.
Respondent has no
rights or legitimate interests in the disputed domain names.
Respondent registered
and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to
submit a Response.
FINDINGS
Since
1994, Complainant has used its BROADCOM mark in commerce in the United States
in relation to digital broadband communications. Complainant has three registered trademarks in the United States
(Reg. Nos. 2,132,930, 2,392,925, 2,326,387).
Complainant is the leading provider of integrated circuits, hardware and
software within its field.
Complainant’s net revenue was $1 billion for 2000 and all of its
products are associated with the BROADCOM mark.
Respondent
registered the disputed domain names on January 29, 2002. Respondent does not currently have a website
at either of the disputed domain names.
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 the Respondent is identical or confusingly similar 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 and is being used in bad faith.
Identical
and/or Confusingly Similar
Complainant
has established rights in its BROADCOM mark because it has registered the mark
with the United States Patent and Trademark
Office and has used the mark
continuously in commerce since 1994.
Respondent’s
<globalbroadcom.com> and <globalbroadcom.net> domain
names are confusingly similar to Complainant’s well-known BROADCOM mark because
they incorporate the entirety of Complainant’s
mark and merely add the generic
term “global” and a generic top-level domain name. Neither the addition of a generic term to a well-known mark or the
addition of a generic top-level domain name is enough to create
a distinct mark
capable of overcoming a claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the
Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word…nor the suffix ‘.com’ detract
from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Rights
or Legitimate Interests
Respondent
has failed to come forward with a Response and therefore it is presumed that
Respondent has no rights or legitimate interests
in the disputed domain
names. 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).
Furthermore,
when Respondent fails to submit a Response the Panel is permitted to make all
inferences in favor of Complainant. See 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”).
Respondent
has not established a website at the disputed domain names and is therefore not
doing anything that can be interpreted
as providing bona fide goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy
¶ 4(c)(iii). See Bloomberg L.P. v. Sandhu, FA 96261
(Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest
can be found when Respondent fails to use
disputed domain names in any way); see
also Vestel Elektronik Sanayi ve
Ticaret AS v. Mehmet 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 Computer Doctor Franchise Sys.,
Inc. v. The Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000)
(finding that the Respondent’s website, which is blank but for links to other
websites,
is not a legitimate use of the domain names).
Respondent,
has not come forward with any evidence to establish that it is commonly known
by the <globalbroadcom.com> or <globalbroadcom.net>
domain names pursuant to Policy ¶ 4(c)(ii).
See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by
the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also CBS
Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)
(finding that Respondent failed to demonstrate any rights or legitimate
interests in the <twilight-zone.net>
domain name since Complainant had
been using the TWILIGHT ZONE mark since 1959).
There
is no evidence, and Respondent does not proffer evidence, that Respondent has
rights or legitimate interests in respect to the
disputed domain name. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO
Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and
in the absence of any submissions
from the Respondents, that the Complainant
has established that (i) the Respondents are not using and have not used, or
are not demonstrating
and have not demonstrated, an intent to use the said
domain name in connection with a bona fide offering of goods or services; (ii)
the Respondents are not and have not been commonly known by the said domain
name; and (iii) the Respondents are not making legitimate
noncommercial or fair
use of the said domain name, without intending to mislead and divert consumers
or to tarnish Complainant’s
<THE BODY SHOP> trademark and service mark”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Because
of the famous and distinctive nature of Complainant's BROADCOM marks,
Respondent is thought to have been on notice of the
existence of Complainant's
mark at the time Respondent registered the infringing domain names. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or
constructive knowledge of commonly known mark
at the time of registration); see
also Victoria's Secret v. Hardin,
FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the
notoriety of Complainants' famous marks, Respondent had actual
or constructive
knowledge of the BODY BY VICTORIA marks at the time she registered the disputed
domain name and such knowledge constitutes
bad faith).
The
disputed domain names are confusingly similar to Complainant's mark and the
Internet user will likely believe that there is an
affiliation between
Respondent and Complainant.
Respondent’s intentional registration of the confusingly similar domain
names is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). 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”).
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 namse <globalbroadcom.com> and
<globalbroadcom.net> be transferred from Respondent
to Complainant.
John J. Upchurch,
Panelist
Dated: March 28, 2002
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