|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
Broadcom Corporation v. Leo Lumacang and
Cebuweek Company
Claim
Number: FA0411000361182
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. Respondents are Leo Lumacang and Cebuweek Company (collectively
“Respondent”), Unit 7, Mango Park Hotel Complex, Gen Maxilom Avenue, Cebu City,
CEBU 6000, PHILIPPINES.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <broadcomph.com>, registered with Direct
Information Pvt. Ltd., d/b/a Directi.com.
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.
Sandra
Franklin as Panelist.
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 11, 2004, Direct Information Pvt. Ltd., d/b/a Directi.com confirmed by
e-mail to the National Arbitration Forum that the
domain name <broadcomph.com>
is registered with Direct Information Pvt. Ltd., d/b/a Directi.com and that
Respondent is the current registrant of the name. Direct
Information Pvt. Ltd.,
d/b/a Directi.com has verified that Respondent is bound by the Direct
Information Pvt. Ltd., d/b/a Directi.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
November 11, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
December 1, 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@broadcomph.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 10, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Sandra Franklin 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <broadcomph.com>
domain name is confusingly similar to Complainant’s BROADCOM mark.
2. Respondent does not have any rights or
legitimate interests in the <broadcomph.com> domain name.
3. Respondent registered and used the <broadcomph.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
provider of highly integrated circuits, computer hardware and software in the
field of digital broadband communications.
Complainant provides highly integrated silicon solutions that enable
broadband communications and networking of voice, video and data
services.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the BROADCOM mark (Reg.
No. 2,132,930, issued January 27,
1998, Reg. No. 2,392,925, issued July 18, 2000, Reg. No. 2,326,387, issued
March 7, 2000, Reg.
No. 2,625,799, issued September 24, 2002 and Reg. No. 2,595,174,
issued July 16, 2002) and has been continuously using the BROADCOM
mark since
November 1994. Additionally,
Complainant holds trademark registration rights in the Philippines for the
BROADCOM mark (App. No. 4-01-801, filed February
5, 2001, App. No. 4-01-946,
filed February 5, 2001).
Respondent
registered the <broadcomph.com> domain name on October 14,
2004. Respondent uses the domain name
to host a “coming soon” webpage.
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.
Complainant has
established that it has rights in the BROADCOM mark through registration with
the USPTO and various international
trademark authorities as well as through
continuous use of its mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently
distinctive and have acquired secondary
meaning.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that
Panel decisions have held that 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.
Respondent’s <broadcomph.com>
domain name is confusingly similar to Complainant’s mark. Respondent added the abbreviation “ph” to
Complainant’s entire BROADCOM mark. The
abbreviation “ph” is likely to be understood by consumers as a geographic
identifier for the Philippines. The
Panel reasonably infers that Internet users may believe that the website
located at the <broadcomph.com> domain name is run by a Philippine
branch or affiliate of Complainant.
Thus, Respondent’s addition of the abbreviation “ph” to Complainant’s
mark does not materially change the impression of the domain
name. Consequently, the Panel finds that the
geographic identifier “ph” does not significantly distinguish Respondent’s
domain name from
Complainant’s mark under Policy ¶ 4(a)(i). See Sunkist Growers, Inc. v. S G, D2001-0432
(WIPO May 22, 2001) finding that the domain names <sunkistgrowers.org>,
<sunkistgrowers.net> and <sunkistasia.com>
are confusingly similar
to Complainant’s registered SUNKIST mark and identical to Complainant’s common
law SUNKIST GROWERS mark;
see also InfoSpace,
Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) finding
that “Respondent's addition of the letters ‘uk’ to Complainant's mark does not
materially change the impression of the domain
name” and is confusingly similar
to the mark under the Policy.
Additionally,
Respondent’s <broadcomph.com> domain name is confusingly similar
to Complainant’s BROADCOM mark because the domain name incorporates
Complainant’s mark in its
entirety and only deviates with the addition of the generic
top-level domain “.com.” The mere
addition of generic top-level domains does not negate the confusing similarity
between Respondent’s domain name and Complainant’s
mark pursuant to Policy ¶
4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) finding that
the domain name <gaygames.com> is identical to Complainant's registered
trademark
GAY GAMES; see also Little Six, Inc. v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) finding that <mysticlake.net> is
plainly identical to Complainant’s MYSTIC LAKE trademark
and service mark.
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See 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;
see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true.
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See 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 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.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See
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"; see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant;
(2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain name in question.
Also, the
disputed domain name automatically resolves to a “coming soon” website because
a personalized website for the domain name
has not been developed. Therefore, the combination of Respondent’s
failure to respond to the Complaint, failure to develop a website for the
disputed domain
name and failure to present to the Panel demonstrable
preparations to use the disputed domain name, is evidence that Respondent lacks
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). 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 disputed domain name where
there is no proof that
Respondent made preparations to use the disputed domain
name in connection with a bona fide offering of goods and services before
notice of the domain name dispute, the disputed domain name did not resolve to
a website and Respondent is not commonly known by
the disputed domain name.
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
In addition, the
Panel finds that there is no conceivable way Respondent could use the disputed domain
name such that it would not
infringe on Complainant’s BROADCOM mark, and
therefore it is illogical to await Respondent’s use of the domain names to find
bad
faith use. See Phat Fashions
v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) finding bad faith under
Policy ¶ 4(a)(iii) even though Respondent has not used the domain
name because
“[I]t 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; see
also Red Bull GmbH v. Gutch,
D2000-0766 (WIPO Sept. 21, 2000) finding that Respondent’s expected use of the
domain name <redbull.org> would lead people
to believe that the domain
name was connected with Complainant, and thus is the equivalent to bad faith
use; 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”.
Furthermore,
Respondent’s registration of the <broadcomph.com> domain name,
containing Complainant’s well-known BROADCOM mark in its entirety, suggests
that Respondent knew of Complainant’s rights
in the BROADCOM mark. There is no evidence to suggest that
Respondent has any connection to any products or services bearing this
variation on Complainant’s
BROADCOM mark.
Moreover, constructive knowledge of the mark may be inferred because the
mark was registered with the USPTO prior to Respondent’s
registration of the
domain name. Thus, the Panel finds that Respondent registered and used the
disputed domain name based on the
distinctive and well-known qualities of
Complainant’s mark. See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000)
finding that the fact “that the Respondent chose to register a well known mark
to which he has
no connections or rights indicates that he was in bad faith
when registering the domain name at issue”; 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 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”.
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <broadcomph.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
December 23, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1531.html