DECISION

Broadcom Corporation v. Smoking Domains and Michelle Lehman

Claim Number: FA0212000137037

PARTIES

Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker & Hale LLP.  Respondent is Smoking Domains and Michelle Lehman, Phoenix, AZ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <broadcommunications.com>, 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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 10, 2002; the Forum received a hard copy of the Complaint on December 11, 2002.

On December 12, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain name <broadcommunications.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  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 December 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 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@broadcommunications.com by e-mail.

A timely Response was received and determined to be complete on January 6, 2003.

On January 13, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Roger P. Kerans as Panelist.  Due to unforeseen circumstances it became necessary to appoint another panelist in order to render a decision in this dispute.

On February 5, 2003 the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Broadcom Corporation, contends that Respondent’s <broadcommunications.com> domain name is confusingly similar to its BROADCOM mark because it merely changes the “com” portion of “broadcom” to “communications.”  Complainant asserts that the conversion of the abbreviated “com” to its unabbreviated form does not create a distinct mark capable of overcoming a claim of confusing similarity.

Complainant asserts that Respondent is using the domain name to divert Internet users to a website that auctions domain name registrations.

Complainant asserts that Respondent registered the disputed domain name with the intention of selling it.  Complainant notes that Respondent has made no use of the disputed domain name other than to offer its registration up for sale for $500. 

B. Respondent

Respondent, Smoking Domains and Michelle Lehman, contends that the disputed domain name is not confusingly similar to Complainant’s BROADCOM mark because the overall impression of the <broadcommunications.com> domain name is not similar to Complainant’s mark.  Respondent asserts that the disputed domain name is a combination of two generic terms, “broad” and “communications.”  Respondent asserts that Complainant is not entitled to protection for every usage of the word “broad” in combination with other terms, and therefore the disputed domain name is not confusingly similar to Complainant’s mark.  Respondent contends that there is no evidence that “com” and “communications” are interchangeable.

Respondent argues that its use of the disputed domain name in conjunction with its business of selling domain name registrations is a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).

Respondent asserts that it did not register or use the disputed domain name in bad faith.

C. Additional Submissions

Complainant contends that Respondent’s domain name <broadcommunications.com> is confusingly similar to the registered BROADCOM trademarks.  The BROADCOM name is readily understood to be an abbreviation of the words “broadband” and “communications,” representing Complainant’s primary product line. 

FINDINGS

Complainant, Broadcom Corporation (“Complainant” or ABroadcom@), has at least five registered United States trademarks and three United States trademark applications pending for numerous variations of its BROADCOM trademark.  Broadcom began using the BROADCOM trademarks as early as November 1994 and has been using the marks continuously ever since their initial adoption.  Complainant uses the marks to identify its goods and services in the field of digital broadband communications.  Broadcom’s trademark rights in the BROADCOM trademarks were established long before Respondent registered <broadcommunications.com> on November 20, 2002.

Broadcom is a leading provider of integrated circuits, computer hardware and software in the field of digital broadband communications.  Broadcom provides highly integrated silicon solutions that enable broadband digital transmission of voice, video, and data.  Broadcom designs, develops and supplies integrated circuits for 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 (VoIP), residential broadband gateways, direct broadcast satellite and terrestrial digital broadcast, optical networking, digital subscriber lines (xDSL) and wireless communications.

 

Broadcom has a significant market share in cable modems, digital set‑top boxes, residential broadband gateways, high‑speed home networking and Fast Ethernet networking, and provides key technology and products in emerging broadband markets such as digital subscriber line (DSL), fixed wireless, direct broadcast satellite and terrestrial digital broadcast.  Broadcoms revenue for the year ending 2001, as reported in its On-line Annual Report, was approximately $961,800,000.00.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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 rights in the BROADCOM marks and provides evidence of numerous trademark registrations with the United States Patent and Trademark Office.  Complainant uses the mark to identify its goods and services in the field of digital broadband communications.

Complainant contends that Respondent’s <broadcommunications.com> domain name is confusingly similar to its BROADCOM marks because it merely changes the “com” portion of “broadcom” to “communications.”  Broadcommunications is simply a complete spelling of Broadcom’s registered mark.  Complainant asserts that the conversion of the abbreviated “com” to its unabbreviated form does not create a distinct mark capable of overcoming a claim of confusing similarity because the domain name will still be associated with Complainant’s goods and services as BROADCOM is the equivalent of “broadcommunications.”  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).

Complainant contends that the “com” portion of the BROADCOM trademarks is universally understood to be an abbreviation of the “communications” portion of the contested domain name.  See Broadcom Corporation v. Broadband Communication Networks, LLC, FA 97871 (Nat. Arb. Forum Aug. 3, 2001) (“domain names that incorporate another’s trademark and merely add a generic descriptor are still confusingly similar for the purposes of Policy par. 4(a)(i)”); see also Broadcom Corporation v. Corporategamer.com, FA 96355 (Nat. Arb. Forum Feb. 12, 2001) (“[t]he addition of the generic word, corporation, which describes Complainant’s business, does not avoid confusing similarity with Complainant’s BROADCOM mark”); see also Space Imaging LLC v. Stephen J. Brownell, AF0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combined the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also E Auto, L.L.C. v. Net Me Up, D2000-0104 (WIPO Apr. 13, 2000) (the domain name <eautomotive.com> found to be confusingly similar to the trademark EAUTO). 

Each of the preceding cases concern adding a generic term to a trademark.  However, that is not the situation here.  The two generic terms comprising Respondent’s domain name are “broad” and “communications.”  Adding the generic term “communications” to Complainant’s trademark would result in “broadcomcommunications.”  Rather, the addition to Complainant BROADCOM trademark are the letters “munication” which spell out the abbreviation for “com” as used by Complainant.  This case is more analogous to Bank of America Corporation v. Fluxxx, Inc., where the Complainant failed to prove “confusing similarity” between its NATIONSBANK mark and <nationsbanking.com>.  See Bank of America Corporation v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (finding that Complainant failed to prove “confusing similarity” under Policy ¶ 4(a)(i) because it did not demonstrate that the public would be confused between its NATIONSBANK mark and the disputed domain name <nationsbanking.com>).  As with NATIONSBANK, Complainant has failed to show that “communication” is likely the meaning the public would give to the letters “com.”

The Panel concludes that the disputed domain name is not confusingly similar to Complainant’s BROADCOM mark because the overall impression of the <broadcommunications.com> domain name is not similar to Complainant’s mark.  The domain name <broadcommunications.com> is different, generic, and not likely to confuse the public. Id.  The disputed domain name is a combination of two generic terms, “broad” and “communications.”  Complainant is not entitled to protection for every usage of the word “broad” in combination with other terms, and therefore the disputed domain name is not confusingly similar to Complainant’s mark.  See Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, D2000-0161 (WIPO May 12, 2000) (stating that "[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (finding that "pet" and "warehouse" are generic terms and therefore not subject to trademark protection; although it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community, the burden is on the party making a claim to show distinctiveness or secondary meaning).  Complainant has not claimed common law rights in the term BROADCOMMUNICATIONS.

Complainant contends that the second portion of its mark, “com,” is a universally recognized abbreviation for “communications.”  However, there are other well-known meanings for “com” such as comedy, comic, comma, and commercial organization.  See www.m-w.com/cgi-bin/dictionary, Merriam-Webster, Unabridged-online.  For the disk operating system known as DOS, the term “com” is defined as “in DOS System, the name of a serial communications port), see www.webopedia.com/TERM/D/COM.html.  A recent and common use of “.com” refers to the top-level domain (TLD) on the Internet that was designed for use as “unrestricted (but intended for commercial registrants).”  See www.icann.org/tlds/ Top-Level Domains.  Therefore, the evidence does not support that “com” and “communications” are interchangeable. 

Complainant has failed to show that “broad communications” is the likely meaning that most people would give to Complainant’s BROADCOM mark.  See ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, D2000-0034 (WIPO Apr. 3, 2000) (finding that, although one may argue that “wc” is an abbreviation for WORLD CUP, it is not likely the meaning most people would give to those letters); see also Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1147 (9th Cir. Feb. 11, 2002) ("Similarity of marks or lack thereof are context-specific concepts.  In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter").

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied.  Because satisfaction of each element listed under paragraph 4(a) is mandatory, it is not necessary to pursue analysis under Policy ¶¶ 4(a)(ii) or (iii).  See Creative Curb v. Edgetec International Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

Complainant fails in establishing rights in a trademark or service mark identical or confusingly similar to the domain name under Policy ¶ 4(a)(i).

DECISION

Having failed to fulfill Policy ¶ 4(a)(i) as required under ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <broadcommunications.com> domain name registration REMAIN with Respondent.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 11, 2003

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