DECISION

Broadcom Corporation v. T Broadous and Broadcom Marketing & Trading, LLC

Claim Number:  FA0303000151547

PARTIES

Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson of Christie, Parker & Hale LLP. Respondent is T Broadous and Broadcom Marketing & Trading LLC, Tulsa, OK (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <broadcom-telephone.com>, registered with Go Daddy Software.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 25, 2003; the Forum received a hard copy of the Complaint on March 26, 2003.

On March 26, 2003, Go Daddy Software, confirmed by e-mail to the Forum that the domain name <broadcom-telephone.com> is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software verified that Respondent is bound by the Go Daddy Software registration agreement and 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 March 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@broadcom-telephone.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 April 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 makes the following assertions:

1. The domain name registered by Respondent, <broadcom-telephone.com>, is confusingly similar to Complainant’s BROADCOM mark.

2. Respondent has no rights to or legitimate interests in the <broadcom-telephone.com> domain name.

3. Respondent registered and used the <broadcom-telephone.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has used the BROADCOM mark since 1994 in relation to its integrated circuits, computer hardware, software, and digital broadband communication services.  Complainant develops and supplies complete “system-on-a-chip solutions” and related hardware and software applications for every major broadband communications market. 

Complainant holds numerous trademarks for the BROADCOM mark registered with the United States Patent and Trademark Office, including Registration Number 2,132,930 and 2,392,925 registered on November 7, 1994.

Respondent registered the <broadcom-telephone.com> domain name February 24, 2003.  Respondent has made no use of the domain name since its registration.  Respondent submitted no evidence of a business plan and nothing to show any other legitimate use of the domain name.

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 to 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the BROADCOM mark through registration with the U.S. Patent and Trademark Office and by continuous use since 1994. 

The domain name registered by Respondent, <broadcom-telephone.com>, is confusingly similar to Complainant’s BROADCOM mark because it incorporates Complainant’s entire mark and merely adds a hyphen and the generic term “telephone.”  The addition of a generic term does not create any distinct characteristics 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 Complainant combined with a generic word or term); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark).  Moreover, use of a hyphen to separate words in a domain name does not create distinguishable features, and thus has no bearing on whether a domain name is identical or confusingly similar.  See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark); see also Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar to the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen).

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

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the mark used by Respondent in the disputed domain name. Respondent did not submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations in the Complaint as true and make inferences in support of allegations in the Complaint.  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 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”).

Moreover, Respondent did not invoke any circumstances to demonstrate that Respondent has any rights and legitimate interests in the domain name.  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).  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 with respect to 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, the Respondent failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent has not established a website at the <broadcom-telephone.com> domain name.  Based on the fame of Complainant’s mark the Panel finds that Respondent could make no conceivable use of the disputed domain name that would not cause Internet user confusion.  Thus, Respondent could make no use of the domain name that would be considered 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 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); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

The Panel finds, based on the fame of Complainant’s BROADCOM mark, that Respondent is not commonly known as BROADCOM-TELEPHONE or <broadcom-telephone.com>.  Complainant’s mark is well-known and thus even if Respondent were to come forward with evidence, Respondent would be hard pressed to establish that it is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the <broadcom-telephone.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).

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

Registration and Use in Bad Faith

Complainant alleged that Respondent acted in bad faith. Based on the fame of Complainant’s mark, the Panel may infer that Respondent knew or was on notice of Complainant’s rights when it registered the infringing domain name <broadcom-telephone.com>.  Registration of a domain name, despite actual or constructive knowledge of Complainant’s rights, is evidence of bad faith 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 domain name registered by Respondent is confusingly similar to Complainant’s mark; any use by Respondent would cause Internet user confusion.  Respondent intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant’s BROADCOM mark.  Thus, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <broadcom-telephone.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: May 9, 2003.

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