Generic Top Level Domain Name (gTLD) Decisions

DECISION

Broadcom Corporation v. Howard Chun-Hao Chuang

Claim Number: FA0309000193876

PARTIES

Complainant is Broadcom Corporation, Irvine, CA (“Complainant”) represented by Gary J. Nelson of Christie, Parker & Hale LLP. Respondent is Howard Chun-Hao Chuang, Rockville, MD (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <broadcomm.net> registered with Tucows, Inc.

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 9, 2003; the Forum received a hard copy of the Complaint on September 10, 2003.

On September 10, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <broadcomm.net> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 September 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 2, 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@broadcomm.net by e-mail.

On September 29, 2003, an individual named Eugene Y. Wang submitted an e-mail to Complainant and the Forum in relation to this dispute. In that e-mail, Mr. Wang explained that he had no plans to use the <broadcomm.net> domain name and offered to transfer the domain name registration to Complainant for $120. However, Mr. Wang forwarded no substantive Response to Complainant’s assertions or any defense based on principles recognized in the Policy.

Having received no formal 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 October 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 formal 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 <broadcomm.net> domain name is confusingly similar to Complainant’s BROADCOM mark.

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

3. Respondent registered and used the <broadcomm.net> domain name in bad faith.

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

FINDINGS

Complainant has provided evidence of a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BROADCOM mark, including Reg. No. 2,132,930 (registered on January 27, 1998) in relation to computer hardware and software used in connection with satellite transmissions and broadband communications.

Respondent registered the <broadcomm.net> domain name on August 12, 2003. Respondent is not using the disputed domain name in connection with an active 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 has established that it has rights in the BROADCOM mark through registration with the USPTO.

Complainant argues that Respondent’s <broadcomm.net> domain name is confusingly similar to Complainant’s BROADCOM mark because the disputed domain name appropriates the entire mark and simply adds the second letter “m” to the end of the mark. The addition of a single letter to a domain name that appropriates a registered trademark does not alleviate the confusing similarity between the domain name and the mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark KELSON).

Accordingly, the Panel finds that Complainant has demonstrated Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has chosen not to contest Complainant’s allegations in this proceeding. Thus, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, the Panel presumes Respondent lacks any rights to or legitimate interests in the disputed domain name because Respondent has not asserted any rights or interests in this proceeding. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Respondent’s willingness to transfer the domain name to Complainant suggests that Respondent lacks any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its lack of legitimate interests or rights).

Respondent has offered no evidence and there is no indication in the record that Respondent is commonly known by BROADCOMM or <broadcomm.net>. Accordingly, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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").

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Based on the fame of Complainant’s BROADCOM mark, the Panel infers that Respondent had actual or constructive notice of Complainant’s rights in its mark when Respondent registered the <broadcomm.net> domain name. The registration of a domain name despite actual or constructive knowledge of Complainant’s rights evidences bad faith pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); 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").

Furthermore, Respondent’s expressed willingness to transfer the <broadcomm.net> domain name to Complainant satisfies the bad faith requirement of the Policy. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding Respondent’s willingness to transfer and its failure to develop the site are evidence of its bad faith registration and use); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that Respondent’s failure to submit a formal Response combined with its agreement at the onset of the Complaint to transfer the disputed names satisfies all the requirements of ¶ 4(a)(iii)).

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 relief shall be GRANTED.

Accordingly, it is Ordered that the <broadcomm.net> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:   October 24, 2003

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