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Generic Top Level Domain Name (gTLD) Decisions |
Broadcom Corporation v. Olivier Taupin
and Ulpenetworks
Claim Number: FA0302000146246
PARTIES
Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson, of Christie, Parker &
Hale LLP. Respondent is Olivier Taupin Ulpenetworks, Laguna
Beach, CA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <broadecom.com>, registered with Wild West Domains, 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.
Judge Irving H. Perluss (Retired) is the
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on February 20, 2003;
the Forum received
a hard copy of the Complaint on February 21, 2003.
On February 21, 2003, Wild West Domains,
Inc. confirmed by e-mail to the Forum that the domain name <broadecom.com> is registered with Wild West Domains, Inc.
and that the Respondent is the current registrant of the name. Wild West
Domains, Inc.
has verified that Respondent is bound by the Wild West Domains,
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 24, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”),
setting a deadline of March 17, 2003 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@broadecom.com
by e-mail.
A timely Response was received and
determined to be complete on March 11, 2003.
A timely Additional Submission from
Complainant was received and determined to be complete on March 17, 2003. A timely Additional Submission from
Respondent was received and determined to be complete on March 19, 2003.
On March 18, 2003,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant has at least five
registered trademarks and three trademark applications pending in the United
States Patent and Trademark
Office for numerous variations of its BROADCOM
trademark. BROADCOM has been the
substantially exclusive user of its BROADCOM trademark beginning at least as
early as November 1994, and has
been using the mark continuously ever since. In the United States, and throughout the
word, BROADCOM’s trademark rights in BROADCOM were established long before
Respondent illegally
adopted and registered the disputed domain name.
2. 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
communications and networking of voice and data services.
3. The disputed domain name is confusingly
similar to Complainant’s BROADCOM trademark.
The “broadecom” portion of the domain name and the BROADCOM trademark
are virtually identical, the pronunciation is identical and
the connotation is
identical. The confusing similarity
between the registered domain name and the BROADCOM trademark is not changed by
the insertion of the letter
“e” between “broad” and “com.”
4. Respondent has no rights or legitimate
interests in the disputed domain name.
5. Respondent has made no demonstrable
use, or preparations to use, the <broadecom.com> domain name, or a name
corresponding to
the <broadecom.com> domain name, in connection with a
legitimate and bona fide offering of goods and services. Rather, Respondent is merely squatting on
the domain name.
6. If there were any actual use by
Respondent of <broadecom.com> or any other variation of BROADCOM, it
would be an infringement
on Complainant’s rights in its BROADCOM trademark.
7. Respondent is not commonly known by the
term BROADECOM or any other variation of BROADCOM. Rather, Respondent appears to be known as either Olivier Taupin
or uplnetworks.
8. Respondent has registered and is using
the <broadecom.net> domain name in bad faith. Respondent has intentionally registered the disputed domain name
to prevent Complainant from using its BROADCOM trademark in the corresponding
phonetically-equivalent domain name (i.e., <broadecom.com>).
9. In the broadband communications field,
Complainant’s BROADCOM trademark is so obviously connected with BROADCOM that
use of a phonetically-equivalent
domain name by someone with no connection with
BROADCOM suggests bad faith.
10. The warehousing of a well-known trademark
such as BROADCOM, by itself, is evidence of bad faith.
B. Respondent
1. Complainant does not have a trademark
right to the disputed domain name.
Respondent is developing a broadcasting e-commerce portal, allowing
users to easily send large number of faxes, e-mails, and SMS messages. This web portal, which ULP Networks started
to develop in July 2002, includes a web-based contact management utility, a
quick process
to send faxes, e-mails or SMS, and log to follow the broadcasting
process.
2. Complainant has no trademarks relating
to communication broadcasts, fax, SMS, e-mail, web portal, or e-commerce that
are going to
be the uses of the disputed domain name.
3. Respondent is an Application Service
Provider (ASP), not a semiconductor manufacturer. Targeted customers are consumers and small business users, none
of whom have any needs linked to Complainant’s current trademarks.
4. The disputed domain name is not
confusingly similar to Complainant’s trademarks because the pronunciation and
the connotation are
different.
5. Respondent has rights and legitimate
interests in the disputed domain name because it has made demonstrable use or
preparations to
use the name in connection with a legitimate and bona fide
offering of services. This includes a
business plan, a Private Placement Memorandum, e-broadcasting web portal
product specifications, and the initial development
of the web portal.
6. Respondent has registered and is
planning to use the BROADECOM domain name in good faith.
7. Respondent will not use the disputed
domain name in the communication semiconductor business, but in the electronic
broadcasting field. The BROADCOM and
BROADECOM names are not phonetically equivalent, as Econ (for economy) and Ecom
(for e-commerce) and Bay and EBAY
are not phonetically equivalent. The “e” is not mute and there is an extra
syllable.
8. Respondent has no intent whatever to
harm Complainant’s business in any way or to benefit from Complainant’s mark or
name, which have
no brand image in Respondent’s industry.
C. Additional Submissions
Complainant’s
Additional Submission
1. Respondent states that it will begin to
use its BROADECOM logo in the near future.
Actual use of this mark will result in infringement of Complainant’s
BROADCOM mark, and such infringement undermines any assertion
by Respondent
that it has a legitimate right in the disputed domain name and it is evidence
of bad faith.
2. Courts have routinely held that
“likelihood of confusion” is the basic test of federal statutory trademark
infringement. In applying the
likelihood of confusion test, courts have noted that “as the degree of similarity
of the goods of the parties increases,
‘the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion declines.’” Fossil,
Inc. v. Fossil Group, 49 U.S.P.Q.2d 1451 (T.T.AB. 1998) quoting in part from Century 21 Real Estate
Corp. v. Century Life of America, 90 F.2d 23 U.S.P.Q.2d 1698, 1700 (Fed.
Cir. 1992).
3. Due to (1) similarity of the proposed
BROADECOM domain name and the BROADCOM mark and (2) the closely related lines
of business of
Respondent and Complainant, there is a likelihood of confusion
between the BROADECOM and BROADCOM mark.
4. Respondent is engaging in a line of
business that is sufficiently related to Complainant’s line of business to
cause a likelihood
of confusion.
Respondent is developing a communication broadcasting e-commerce portal
which will allow users to communicate and send large amounts
of date over the
Internet. Complainant is the leading
provider of highly integrated silicon solutions that enable broadband
communications and networking of
voice, video and data services. Using proprietary technologies and advance
design methodologies, Complainant designs, develops and supplies complete
system-on-chip
solutions and related hardware and software applications for
every major broadband communications market.
Thus, Respondent and Complainant are both involved in large scale
communication and data transfer services over the Internet.
5. Respondent’s infringement of BROADCOM’s
registered BROADCOM trademark in the United States is evidence of bad faith.
Respondent’s
Additional Submission
1. The disputed domain name is not an
infringement of Complainant’s BROADCOM mark.
Respondent is selling a service that is in a different line of business.
2. Respondent is a business-to-business
service (e-mail, fax, and SMS broadcasting) while Complainant is selling a
product (semiconductor)
sold under OEM-type agreements.
3. Respondent’s customers are home offices
and small businesses while Complainant’s customers are PC and peripherals
(Device) manufacturers.
4. Respondent does not attempt in any way
to use the Complainant’s trademark or to confuse Complainant’s customers: BROADCOM is in ALL CAP while BroadEcom is in
lower cap, using the graphic “e” that is used to define any Internet
access. Colors and style are
different. The name itself is
different: three syllables, with the
emphasis on e-com. Broad is an
abbreviation of broadcast, not broadband.
5. Respondent
sells its service under its own name through a web portal, while Complainant’s
semiconductors are included in a PC or peripherals
manufacturer’s device, in
accordance with an OEM (Original Equipment Manufacturer) agreement.
6. Because
the Complainant has no consumer brand name, and because Respondent’s customers
are not likely to buy any of the Complainant’s
products, and because the
pronunciation of the mark is different, the confusion of marks asserted by
Complainant does not exist.
7. Respondent
will use BroadEcom as a service company selling broadcasting solutions over the
Internet, and will have nothing in common
with a broadband chipset manufacturer
that has no brand name with BroadEcom customers, i.e., home offices and small
businesses. Respondent is willing to
modify its logo to make sure that the domain name is correctly pronounced
Broad-ECOM.
FINDINGS AND CONCLUSIONS
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.
The
gravamen of Complainant’s complaint is that Respondent by registering the
disputed domain name has infringed Complainant’s long-established
trademark.
Professor
McCarthy teaches us that the keystone of common law and statutory trademark
infringement is the “likelihood of confusion,”
and so it is here.[1] The Panelist, however, finds that there
is no likelihood of confusion, i.e., the disputed domain name and Complainant’s
mark are not
confusingly similar for the reasons set forth, infra.
Professor
McCarthy refers to the 1983 Restatement of Torts, Section 731, which listed
nine foundational factors to be considered which
have been utilized in both competitive
and non-competitive cases.[2] These factors have been used by each of the
various Federal Circuit Courts to formulate their own list of factors.[3]
The 1938 Restatement factors are:
1.
The
likelihood that the actor’s goods, services or business will be mistaken for
those of the other;
2.
The
likelihood that the other may expand his business so as to compete with the
actor;
3.
The extent
to which the goods or services of the actor and those of the other have common
purchasers or users;
4.
The extent
to which the goods or services of the actor and those of the other are marketed
through the same channels;
5.
The
relation between the functions of the goods or services of the actor and those
of the other;
6.
The degree
of distinctiveness of the trademark or trade name;
7.
The degree
of attention usually given to trade symbols in the purchase of goods or
services of the actor and those of the other;
8.
The length
of time during which the actor has used the designation;
9.
The intent
of the actor in adopting and using the designation.
In
Dreamworks Production Group, Inc. v. SKG
Studio (9th Cir. 1998) [1998] USCA9 1004; 142 F.3d 1127, Judge Kozinski, in his
usual droll manner, said (at 1129):
The test for likelihood of confusion is
whether a ‘reasonably prudent consumer’ in the marketplace is likely to be
confused as to
the origin of the good or service bearing one of the marks. In AMF
Inc. v. Sleekcraft Boat [1979] USCA9 691; 599 F.2d 341, 348-49 (9th Cir. 1979), we
listed eight factors to facilitate the inquiry: (1) strength of the mark; (2) proximity or relatedness of the
goods; (3) similarity of sight, sound and meaning; (4) evidence of actual
confusion; (5) marketing channels; (6) type of goods and purchaser care; (7)
intent; and (8) likelihood of expansion.
The factors should not be rigidly weighed; we do not count beans. ‘Rather, the factors are intended to guide
the court in assessing the basic question of likelihood of confusion.’ Gallo
Winery, 967 F.2d at 1290.[4]
We
begin with the knowledge that believability of a witness is difficult to
ascertain absent confrontation of the witness at a hearing
where testimony is
taken.[5] Nevertheless, we must attempt to apply the
Restatement and the Sleekcraft
factors.
With
respect to Restatement Factor One, it is found that one party’s good, services
or business will not be mistaken for the other.
With
respect to Restatement Factor Two, there is no evidence that there will be
expansion by Respondent to compete with the Complainant.
With
respect to Restatement Factor Three, Complainant produces and sells articles to
major computer companies, while Respondent sells
only services to small
businesses and individuals. They,
accordingly, do not normally have common purchasers or consumers.
With
respect to Restatement Factor Four, the evidence is that Complainant’s products
are marketed by contract, while Respondent’s
services are marketed on the
Internet. Obviously, the same channels
are not being utilized.
With
respect to Restatement Factor Five, the functions of the goods and services of
the parties are completely different.
With
respect to the distinctiveness of the trademark, which is Restatement Factor
Six, it is not really distinctive because the term
“broad” is commonly used.
The
evidence is that scant attention to trade symbols is given by the major purchasers
of Complainant’s products, because they are
seeking quality.
Of
course, Complainant has used its trademark far longer than the registration of
the disputed domain name by Respondent, and, thus,
Restatement Factor Eight
favors Complainant.
Accepting
Respondent’s pledge, it has not and will not harm Complainant’s business. Thus, in the context of Restatement Factor
Nine, we must find that Respondent has not acted in bad faith and will not so
act.
With
respect to the Sleekcraft factors, we
assume that the mark is strong (1); however, the goods and services of the
parties are not related (2); there is similarity
of sight and sound, but not of
meaning (3); there is no evidence of actual confusion (4); the marketing
channels of the parties are
different (5); the types of goods and services
marketed by the parties are not the same or really related (6); Respondent
asserts
that it has no intent whatever now or in the future to harm Complainant
(7); and, finally, there is no evidence that Respondent will
expand into being
a competitor of Complainant (8).
Thus,
whether analyzing the evidence utilizing either the Restatement factors or the Sleekcraft factors, or both, the
overwhelming result is that the disputed domain name is not confusingly
similar to Complainant’s mark, nor is Complainant’s mark being infringed. Reasonably prudent customers of each party
are not likely to be confused as to the origin of the goods or services bearing
one of
the marks.
Having
reached the conclusion that Complainant has not demonstrated “confusingly
similar,” one of the triad factors it must establish,
it is not necessary for
the Panelist to consider “rights and legitimate interests” and “registrations
and use in bad faith.”
DECISION
Having not established all three elements
required under ICANN Policy, the Panel concludes that relief sought by
Complainant shall
be and the same is DENIED.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated:
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