national arbitration forum

DECISION

Broadcom Corporation v. Ibecom PLC

Claim Number:  FA0411000361190

PARTIES

Complainant is Broadcom Corporation (“Complainant”), represented by Gary J. Nelson, of Christie, Parker & Hale LLP, 350 West Colorado Boulevard, Suite 500, P.O. Box 7068, Pasadena, CA 91109-7068.  Respondent is Ibecom PLC (“Respondent”), 72 New Bond Street, London, London 1 WS 1 RR, United Kingdom.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ebroadcom.com>, registered with Domaindiscover.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2004.

On November 5, 2004, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the domain name <ebroadcom.com> is registered with Domaindiscover and that Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 November 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 29, 2004 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@ebroadcom.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 8, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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. Respondent’s <ebroadcom.com> domain name is confusingly similar to Complainant’s BROADCOM mark.

2. Respondent does not have any rights or legitimate interests in the <ebroadcom.com> domain name.

3. Respondent registered and used the <ebroadcom.com> domain name in bad faith.

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

FINDINGS

Respondent Broadcom Corporation, owns trademark rights for the BROADCOM mark through registration with the United States Patent and Trademark Office (Reg. No. 2,132,930, issued January 27, 1998) and the European Community (Reg. No. 763540, issued August 23, 1999).  Since at least as early as November 1994, Complainant began using the BROADCOM mark continuously in connection with providing highly integrated circuits and computer hardware and software in the field of digital broadband communications and networking of voice, video and data services. 

Respondent registered the <ebroadcom.com> domain name on October 23, 2004.  The disputed domain name resolves to an inactive website. 

 

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 draw such inferences it 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 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 and/or Confusingly Similar

Complainant registered the BROADCOM mark with the USPTO and the European Community.  Therefore, Complainant has established rights in the marks pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

The <ebroadcom.com> domain name incorporates Complainant’s BROADCOM mark in its entirety.  Respondent has simply prefaced the mark with the letter “e.”  It is well established that adding a single letter to a third-party mark fails to alleviate the confusing similarity that arises as the result of incorporating a third-party mark within a domain name.  Therefore, consistent with prior decisions under the Policy, the Panel finds the <ebroadcom.com> domain name confusingly similar to Complainant’s BROADCOM mark pursuant Policy ¶ 4(a)(i).  See Computerized Security Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“[T]he addition of the letter ‘C’ does nothing to 'distinguish' Respondent's domain name from Complainant's registered trademark, which remains the principal element of the domain name.”); see also Am. Online, Inc. v. Inforian, Inc., FA 115086 (Nat. Arb. Forum Aug. 26, 2002) (“Respondent's <cicq.net > domain name is confusingly similar to Complainant's ICQ mark because it incorporates Complainant's entire mark and merely adds the letter ‘c’ to the beginning.”).

Likewise, the addition of the top level domain “.com” to the disputed domain name is irrelevant to the analysis.  See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Complaniant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent’s failure to respond to the Complaint functions as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth in the Complaint as true.  See Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”); see also 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); see also Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true).

There is nothing in the record to indicate that Respondent is commonly known by the <ebroadcom.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Furthermore, the disputed domain name resolves to an inactive website, and Respondent has failed to demonstrate preparations to use the <ebroadcom.com> domain name.  Passive holding of a domain name that is confusingly similar to another’s mark does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii).  See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with Complainant’s trademark claims); see also 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).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is passively holding the <ebroadcom.com> domain name.  The disputed domain name resolves to an inactive website and Respondent has not demonstrated preparations to use the domain name pursuant to a bona fide offering of goods or services.  Moreover, the Panel cannot perceive respondent using using the domain name in a manner that would not infringe upon Complainant’s mark.  Therefore, the Panel finds Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii) through its passive holding of the name.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also 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”); 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).

 

Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is ordered that the <ebroadcom.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  December 22, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1539.html