DECISION

Broadcom Corporation v. Alexander Novostroev

Claim Number: FA0408000318098

PARTIES

Complainant is Broadcom Corporation (“Complainant”), represented by Gary J. Nelson, of Christie, Parker & Hale LLP, 350 West Colorado Boulevard, Suite 500, PO Box 7068, Pasadena, CA 94409-7068.  Respondent is Alexander Novostroev (“Respondent”), 4th Floor, 2-24-3, Higashi, Shibuya ward, Tokyo 150-0011, Japan.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <broadcomm-study.com>, registered with Aaaq.com.

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.

David E. Sorkin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 25, 2004; the Forum received a hard copy of the Complaint on August 26, 2004.

On August 27, 2004, Aaaq.com confirmed by e-mail to the Forum that the domain name <broadcomm-study.com> is registered with Aaaq.com and that Respondent is the current registrant of the name.  Aaaq.com has verified that Respondent is bound by the Aaaq.com 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 August 31, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 20, 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@broadcomm-study.com by e-mail.

A timely Response was received and determined to be complete on September 15, 2004.

Complainant submitted an Additional Submission on September 20, 2004.  The Panel has considered Complainant’s Additional Submission to the extent that it includes relevant material that could not reasonably have been included in the initial Complaint.

On September 23, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a large and well-known provider of computer hardware and software for broadband communications.  Since at least 1994 Complainant has used its trademark BROADCOM and variations thereof for computer hardware, software, and related goods and services.  Complainant’s marks are registered in both the United States and Japan.  Complainant’s total annual revenue is approximately $1.61 billion; all of its products and services are associated with its BROADCOM trademark.

Complainant alleges that the domain name registered by Respondent, <broadcomm‑study.com>, is confusingly similar to Complainant’s BROADCOM mark.

Complainant further alleges that Respondent lacks rights or legitimate interests in the disputed domain name.  Complainant contends that under the Policy, Respondent bears the burden of proving that he has rights or legitimate interests in the domain name.  See FAO Schwarz v. Zuccarini, No. FA95828 (NAF Dec. 1, 2000).  Complainant asserts that any use by Respondent of Complainant’s mark, including within the designations “broadcomm” and “broadcomm‑study,” is a direct infringement of Complainant’s trademark rights, and therefore cannot be a basis for rights or legitimate interests.  Complainant also suggests that a lack of rights or legitimate interests may be inferred from Respondent’s failure to develop an active website or otherwise make use of the disputed domain name.

Finally, Complainant alleges that Respondent registered and is using the disputed domain name in bad faith, because he is passively holding the domain name, and because the BROADCOM trademark is so obviously connected with Complainant that use by someone with no connection to Complainant suggests bad faith.

B. Respondent

Respondent denies that the disputed domain name is confusingly similar to Complainant’s.  Respondent claims that the domain name is derived from the words “broad communications,” and refers to the name of Respondent’s company, Broadcomm, Inc., which has been registered in accordance with Japanese law.  Respondent further claims that the word “study” represents the main word in the disputed domain name.

Respondent asserts that he has rights or legitimate interests in the disputed domain name based upon its intended use to provide information about studying in Japan, which does not infringe upon Complainant’s marks because it involves a very different field.  Respondent states that his company’s website is currently under construction and will be finished soon.  For the same reasons, Respondent denies that the disputed domain name was registered or is being used in bad faith.

C. Additional Submissions

In its Additional Submission, Complainant contends that Respondent, an individual, is the registrant of the disputed domain name, and therefore cannot assert in this proceeding any rights or legitimate interests of the Japanese company Broadcomm, Inc.

Complainant also states that it received a letter from Respondent dated September 15, 2004, offering to sell the disputed domain name in exchange for the “significant” costs Respondent has expended to date, and asserts that this letter is evidence of Respondent’s bad faith.

As noted above, the Panel has considered the Additional Submission to the extent that it includes relevant material that could not reasonably have been included in the initial Complaint.  In particular, the Panel views the letter dated September 15, 2004, as primarily an attempt to initiate settlement negotiations that is of little or no relevance to the present matter.

FINDINGS

The Panel finds that the disputed domain name <broadcomm‑study.com> is confusingly similar to Complainant’s BROADCOM mark; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.

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

The disputed domain name <broadcomm‑study.com> is comprised of the Respondent’s trademark, with the last letter repeated, plus a hyphen and the general term “study,” followed by the generic top-level domain suffix “.com”.  The Panel rejects Respondent’s contention that “study” represents the main part of the domain name.  To the contrary, the most significant part of the domain name is clearly “broadcomm.”  In the Panel’s view, there is little doubt that the domain name is confusingly similar to the BROADCOM mark.

Rights or Legitimate Interests

The question of rights or legitimate interests is a closer one.  The Panel initially rejects Complainant’s contention that Respondent bears the burden of proving that he has rights or legitimate interests.  Complainant’s allegation shifts the burden of production to Respondent, but Complainant retains the burden of proof on this and all other elements required by the Policy.  See, e.g., Do The Hustle, LLC v. Tropic Web, No. D2000-0624 (WIPO Aug. 21, 2000).

Respondent’s intended use of the domain name seems very likely to be dilutive (and perhaps infringing) of Complainant’s well-established trademark rights, and based upon the evidence before the Panel it does not even appear that Respondent has yet engaged in sufficient preparations to use the domain name in connection with a bona fide purpose in commerce.  The Panel thus does not consider Respondent’s intended use of the domain name to be a sufficient basis for rights or legitimate interests.

Respondent’s strongest claim to rights or legitimate interests is based upon his argument that the domain name reflects the name of his company, Broadcomm, Inc., which he claims is registered in accordance with Japanese law.  Complainant asks the Panel to disregard any rights or interests of Broadcomm, Inc., on the grounds that the disputed domain name was registered solely in Respondent’s name.

Respondent has failed to offer any evidence (aside from his own unsubstantiated statements in the Response itself) that a company by the name of Broadcomm, Inc., even exists—let alone that such a company (or, more importantly, its corporate name) “was registered in Tokyo in strict accordance with Japanese law” as Respondent claims.  The Panel therefore does not find rights or legitimate rights on this basis either.

The Panel finds that Complainant has sustained its burden of proving that Respondent has no rights or legitimate interests in respect to the disputed domain name.

Registration and Use in Bad Faith

The closely related questions of bad faith registration and use depend largely upon Respondent’s motivation for selecting the disputed domain name.  Under Paragraph 4(b)(i) of the Policy, bad faith registration and use may be found based upon indications that the domain name was acquired for the purpose of selling it at a profit to the trademark owner or a competitor thereof.

Respondent claims that he selected the disputed domain name to represent “broad communications” and the name of his company, Broadcomm, Inc.  The fame of Complainant’s mark and the paucity of evidence regarding Respondent’s activities (including even the very existence of his company) cast considerable doubt upon Respondent’s credibility in the view of the Panel.  It seems more likely that Respondent registered the disputed domain name primarily because of its similarity to Complainant’s name and trademark, and that he has held it in the hope of selling it at a profit to Complainant or a competitor thereof.  If “Broadcomm, Inc.” and Respondent’s claimed plans for the disputed domain name were anything more than a mere pretext intended to disguise an attempt to exploit the name’s trademark value, surely Respondent would have been able to offer the Panel at least something in the way of corroborating evidence.

The Panel finds that Complainant has sustained its burden of proving that the disputed domain name was registered and has been used in bad faith.

DECISION

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

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

David E. Sorkin, Panelist
Dated:  October 7, 2004

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