DECISION

Broadcom Corporation v. Copitraxx Ltda

Claim Number:  FA0403000250029

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.  Respondent is Copitraxx Ltda (“Respondent”), Orcuyo #7, Santa Cruz, Oranjestad, Aruba.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ibroadcom.com> and <i-broadcom.com>, registered with Go Daddy Software, Inc.

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 March 29, 2004; the Forum received a hard copy of the Complaint March 30, 2004.

On March 30, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <ibroadcom.com> and <i-broadcom.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 2, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 22, 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@ibroadcom.com and postmaster@i-broadcom.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 May 7, 2004, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain names registered by Respondent, <ibroadcom.com> and <i-broadcom.com>, are confusingly similar to Complainant’s BROADCOM mark.

2. Respondent has no rights to or legitimate interests in the <ibroadcom.com> or <i-broadcom.com> domain names.

3. Respondent registered and used the <ibroadcom.com> and <i-broadcom.com> domain names in bad faith.

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

FINDINGS

Complainant, Broadcom Corporation, provides communications technology, including networking of voice, video, and data services as well as related hardware and software solutions.  Complainant registered the BROADCOM mark with the U.S. Patent and Trademark Office (“USPTO”) (Reg. Nos. 2,132,930 and 2,392,925) on July 23, 1996 and October 10, 2000.  Complainant’s revenue for the year 2003 was approximately $1.61 billion.  Because of its level of revenues, and because Complainant uses the BROADCOM mark on all of its goods and services, it has reached fame in its respective markets.

Respondent, Copitraxx Ltda, registered the <ibroadcom.com> and <i-broadcom.com> domain names March 4, 2004, and March 5, 2004, but has made no use of the disputed domain names.

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 Complainant to 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 to and/or Confusingly Similar

Complainant has established with extrinsic proof in this proceeding that it has rights to the BROADCOM mark, as evidenced by its registration with the USPTO.  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).

The <ibroadcom.com> and <i-broadcom.com> domain names are confusingly similar to the BROADCAM mark.  The only difference, the addition of the “i” and a hyphen, does not significantly distinguish the domain names from the mark.  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ); see also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to Complainant's EASYJET mark and therefore that they are confusingly similar).

The Panel finds that Complainant has established the requirements of Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the two disputed domain names.  Complainant has alleged that Respondent has no such rights to or legitimate interests in the domain names containing that mark. Respondent did not file a Response.  Therefore, the Panel may accept any reasonable assertions by Complainant as true.  See 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); see also 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).

Respondent is wholly appropriating Complainant’s mark in its domain names and Respondent is not using either domain name.  Pssively holding a domain name that wholly appropriates another’s mark is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); 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).

Nothing in the record, including the WHOIS domain name registration information, suggests that Respondent is otherwise known by the domain names, pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one 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).

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

Registration and Use in Bad Faith

Complainant offered proof to show that its BROADCOM mark is well known.  Given the fame associated with the mark, the Panel infers that Respondent knew of the mark when registering the two disputed domain names containing that well known mark.  This supports findings of Respondent’s bad faith, pursuant to Policy ¶ 4(a)(iii).  See 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 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 “[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”).

Further, Complainant registered the BROADCOM mark, and the Panel finds that this establishes that Respondent had constructive notice of Complainant’s mark. Respondent’s subsequent registration of the domain names, which fully incorporated Complainant’s mark, is evidence of 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 Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

The Panel finds that Complainant has established the requirements of 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 <ibroadcom.com> and <i-broadcom.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: May 21, 2004

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