DECISION

Broadcom Corporation v. Abroadcomm LLC and R. Valenti

Claim Number:  FA0403000244074

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 Abroadcomm LLC and R. Valenti (“Respondent”), 9 Brush Hill Road, New Fairfield, CT 06812.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <abroadcom.com>, registered with Register.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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

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

On March 5, 2004, Register.com confirmed by e-mail to the Forum that the domain name <abroadcom.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 March 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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@abroadcom.com by e-mail.

On April 5, 2004, the parties requested and were granted a stay of the proceedings until May 14, 2004.  On May 14, 2004, Complainant requested and was granted the reinstatement of the case prior to the expiration of the stay.

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 27, 20004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 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 <abroadcom.com> domain name is confusingly similar to Complainant’s BROADCOM mark.

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

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

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

FINDINGS

Complainant has at least five registered U.S. trademarks for variations of its BROADCOM trademark.  Foremost among Complainant’s marks is BROADCOM, which was registered on January 27, 1998 in connection with “computer hardware and software for digitally operating upon signals in a network system to recover the information represented by such signals and for recovering and decoding video and audio information from signals transmitted by a direct broadcast satellite” (Reg. No. 2,132,930).

Complainant is a widely known business with revenue of approximately $1.61 billion for the year ending 2003.

Respondent registered the disputed domain name <abroadcom.com> on June 13, 2001.  At the time the Complaint was filed, Respondent was using the disputed domain name to resolve to a passive website that contained a single banner at the top of the page that stated in large lettering, “ABROADCOM LLC.”  Beneath this title was the tagline, “COMMUNICATION, COMPUTING AND ELECTRONIC TECHNOLOGY CO.”

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 owns numerous U.S. trademark registrations for the BROADCOM mark and variations thereof.  Therefore, Complainant has established rights in the BROADCOM mark under the Policy.  See 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); see also 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).

The disputed domain name <abroadcom.com> differs from Complainant’s BROADCOM mark only as the result of Respondent’s addition of the letter “a” to Complainant’s mark.  A domain name that contains a third party’s mark and merely includes an additional letter has frequently been found to be confusingly similar to the mark under the Policy.  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 Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding that the domain name <efitnesswholesale.com> is confusingly similar to Complainant’s mark, FITNESS WHOLESALE).

Generic top-level domains are irrelevant in determining whether a domain name is confusingly similar to a complainant’s mark under Policy ¶ 4(a)(i).  Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys LTD v. Domain Finance Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy 4(a)(i) analysis”).

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

Rights or Legitimate Interests

Respondent, through its own failure to respond to the Complaint, has created a presumption that it lacks rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Broadcom Corp. v. Createmutex, FA 128711 (Nat. Arb. Forum Dec. 16, 2002) (“Respondent's failure to Respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).

According to the record, Respondent has not actively used the disputed domain name.  Complainant argues that Respondent is passively holding the domain name.  Without evidence to the contrary and in the absence of a Response, the Panel finds that Complainant’s assertion is reasonable in light of the attached website.  Thus, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  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 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 Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

There evidence before the Panel contains an assertion that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  There is no clear evidence that contradicts such an assertion.  Therefore, the Panel accepts the assertion that Respondent is not commonly known by the disputed domain name.  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").

Furthermore, Complainant’s BROADCOM mark is extremely well-known in the technology sector.  The disputed domain name contains a tagline directly relating to the technology sector that Complainant is renown for.  Given the prominence of the BROADCOM mark and the fact that Respondent registered a confusingly similar domain name presumably for potential use in the identical sector as Complainant, the Panel finds that Respondent lacks rights to and legitimate interests in the domain name.  See Geoffrey, Inc., v. S Rus, D2000-1008 (WIPO Oct. 14, 2000) (holding that the prominence of the business name "Toys ‘R Us" undermined any legitimate interest in a web-site called toysrus.com); see also Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (finding that using a third party’s well-known business name in a domain name undermines any claim to a legitimate interest under the Policy.).

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

Registration and Use in Bad Faith

As previously stated, Respondent is passively holding the domain name.  Respondent registered the domain name presumably for potential use in the identical technology sector that Complainant engages in under its famous BROADCOM mark.  As such, the Panel finds Respondent registered and used the disputed domain name in bad faith 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 Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).

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 <abroadcom.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  June 7, 2004

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