National Arbitration Forum

DECISION

Broadcom Corporation v. Patrick J. Starling

Claim Number: FA0411000360986

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 Patrick J. Starling (“Respondent”), Richmond House, East End, Long Clawson, Melton Mowbray, Leicestershire, LE14 4NG, United Kingdom of Great Britain.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <broadacom.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Richard B. Wickersham, Judge (Ret.), Panelist.

PROCEDURAL HISTORY

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 7, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the domain name <broadacom.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 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@broadacom.com by e-mail.

A timely Response was received and determined to be complete on November 29, 2004.

A timely Additional Submission was received from Complainant on January 14, 2005.

A timely Additional Submission was received from Respondent on January 18, 2005.

On January 21, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Richard B. Wickersham, Judge (Ret)., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant Broadcom Corporation ("Broadcom" or "Complainant") has at least five registered United States trademarks and two United States trademark applications pending for numerous variations of its BROADCOM trademark ("the BROADCOM trademark").   Broadcom has been the substantially exclusive user of the BROADCOM trademark beginning at least as early as November 1994, and has been using the mark continuously ever since.  In the United States, and throughout the world, Broadcom’s trademark rights in BROADCOM were established long before Respondent illegally adopted and registered BROADACOM.COM as a domain name. 

Broadcom is a leading provider of highly integrated circuits, computer hardware and software in the field of digital broadband communications.  Broadcom provides highly integrated silicon solutions that enable broadband communications and networking of voice, video and data services.

Using proprietary technologies and advanced design methodologies, Broadcom designs, develops and supplies complete system-on-a-chip solutions and related hardware and software applications for every major broadband communications market.  Broadcom’s diverse product portfolio includes solutions for digital cable and satellite set-top boxes; cable and DSL modems and residential gateways; high speed transmission and switching for local, metropolitan, wide area and storage networking, home and wireless networking; cellular and terrestrial wireless communications; Voice over Internet Protocol (VoIP) gateway and telephony systems; broadband network processors; and System I/O server solutions.

Broadcom has a significant market share in cable modems, digital set-top boxes, residential broadband gateways, servers, network switches and Gigabit Ethernet, and provides key technology and products in emerging broadband markets such as Wireless LAN, Bluetooth, cellular, digital subscriber line (DSL), direct broadcast satellite, personal video recording (PVR) and broadband processors.

Broadcom has strategic customer relationships with Ambit, Apple, Cisco Systems, Dell, D-Link, EchoStar, Hewlett-Packard, IBM, Motorola, Nortel Networks, Pace, Pioneer, Scientific-Atlanta, Sony Ericsson, Thomson CE and 3Com, among others.

Broadcom's revenue for the year ending 2003, as reported in its On-line Annual Report, was approximately $1.61 billion.  All of Broadcom's products and services are associated with the BROADCOM trademark.

B. Respondent

The Repsondent Patrick J. Starling, Esquire is the majority shareholder in the British Registered Company under the UK Companies Act 1985 in the name of Broadacom Limited.  The Company Name is registered at the UK Companies Registration Office in Cardiff as from the 15 March 1993.  The Company Registration Number is 2799554.  Under UK law, Broadacom Limited has full title to its name worldwide.  Patrick J. Starling, Esquire is acting as their representative in the acquiring of the domain name broadacom.com.  The Complainant Broadcom Corporation claims to be the user of the name Broadcom since November 1994 some sixteen months after Broadacom Limited legitimately first used their trading name.

The “confusingly similar” in the names claimed by Broadcom Corporation is a result of Broadcom Corporation’s first use of their trademark/name taking place after that of Broadacom Limited.  Broadcom Corporation is the cause of the similarity claimed.

The claimed similar domain name of <broadcom.com> has a registrant of Network Solutions, LLC not the Complainant Broadcom Corporation.  The domain name <broadcom.org> has been in existence since October 2001; <broadacom.co.uk> since November 1999.  These have the identical name as the Complainant but appear to be no threat to the trade name of the Broadcom Corporation as demonstrated by the time scale they have been registered.

Broadacom Limited trades in BROAcast, DAta, COMmunications providing technical services to the worldwide media and news broadcasters.  This is a select clientele who request services based on reputation, recommendation and previous performance.  Broadacom Ltd. is setting up <broadacom.com> as a reference web site to assist in this and has no intention of selling any physical goods from this web site.

C. Additional Submissions By Complainant

Respondent has submitted no evidence showing sufficient nexus between Patrick J. Starling and Broadacom Ltd.  In fact, Respondent has provided no evidence of any nexus other than Respondent's own allegations in the first paragraph of section [3.] of Respondent's Response.  However, a party's "[c]onclusory allegations are not evidence." Miller v. Aladdin Temp-Rite, LLC, 72 Fed. Appx. 378, 380, No. 03-5177, 2003 U.S. App. LEXIS 16469, at *5 (6th Cir. Aug. 8, 2003) (citing Lujan v. Nat'l Wildlife Fed'n, [1990] USSC 129; 497 U.S. 871 (1990)).

Respondent has submitted an alleged certificate of incorporation of Broadacom Limited.  Aside from the document failing to show any nexus between Broadacom Limited and Patrick J. Starling (nowhere on the document can Mr. Starling's name be found), Respondent has failed to sufficiently authenticate the document, providing an uncertified copy.  See Fed. R. Evid. 901-902 (Complainant acknowledges that this Panel is not bound by rules of evidence but requests that basic requirements of authenticity be observed).  Complainant therefore objects to admission of this document into evidence and requests that the Panel not admit the document pursuant to UDRP Rule 10(b).

Even if there were sufficient nexus between Broadacom Limited and Patrick J. Starling, which Respondent has not shown as argued above, Mr. Starling is not commonly known as Broadacom Limited and cannot claim rights on behalf of Broadacom Limited.  The domain BROADACOM.COM is not registered in the name of Broadacom Limited, but in the name of Patrick J. Starling as an individual.

In Broadcom Corp. v. Phillipines Online the arbitrator held that "[t]here is no obligation . . . to recognize any party other than the holder of the domain name registration." FA 96683 (Mar. 20, 2001).  The "holder of the domain name, is the real party in interest." Id.  Here, the holder of the domain name is Patrick J. Starling.  Therefore, Patrick J. Starling, and not Broadacom Limited, is the real party in interest and cannot assert rights on Broadacom Limited's behalf.  The Panel agrees.

D.  Additional Submission By Respondent

Respondent made an Additional Submission in Response to Complainant received on January 18, 2005 and it was timely.

Said Response was filed by Patrick J. Starling, Esquire for and on behalf of Broadacom Ltd., its Director and also Secretary.  It was alleged that Broadacom Ltd. is not for sale and that Broadacom Ltd. has been trading under its name for over a year before the Broadcom Corporation started trading under their name.

Respondent requests that the remedy requested by the Complainant be withdrawn.  The Panel fully considered and evaluated this additional submission.

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.

FINDINGS

Identical and/or Confusingly Similar Policy ¶ 4(a)(i).

Complainant asserts that it has established rights in the BROADCOM mark by registering it with the United States Patent and Trademark Office (Reg. No. 2,132,930 issued January 27, 1998; Reg. No. 2392925 issued October 10, 2000; Reg. No. 2595174 issued July 16, 2002) and in the European Community (Reg. No 763,540 issued August 23, 1999; Reg. No. 1,311,257 issued January 22, 2001; Reg. No. 1,319,128 issued January 22, 2001).  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 and that Respondent has the burden of refuting this assumption).

Complainant argues that the <broadacom.com> domain name registered by Respondent is confusingly similar to Complainant’s BROADCOM mark because the domain name fully incorporates the mark, deviating only with the addition of the letter “a” and the generic top-level domain (gTLD) “.com.”  The Panel finds that the addition of one letter to Complainant’s registered mark is insufficient to distinguish the domain name and that the addition of a gTLD is irrelevant.  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 Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also 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).

Rights or Legitimate Interests Policy ¶ 4(a)(ii).

Complainant alleges that Respondent is not commonly known by the <broadacom.com> domain name or the name “Broadacom.”  Complainant asserts that although Respondent has provided a purported scanned copy of a certificate of incorporation of a company called Broadacom Limited in the United Kingdom, the document, even if authenticated, does not include any indication of a relationship between Respondent and the company.  Complainant further argues that Respondent is not a licensee of Complainant.  The Panel concludes that Respondent lacks rights and legitimate interests in the disputed 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 rights in the mark precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Complainant contends that Respondent has not made any demonstrable use or preparations to use the <broadacom.com> domain name and that any actual use of the domain name by Respondent would constitue an infringement of Complainant’s rights in the BROADCOM mark.    Furthermore, Respondent asserts that the domain name is to be used for a website that has already been developed but provided no evidence of the existence of such website plans.  The Panel finds that Respondent’s failure to use the disputed domain name since its registration on October 1, 2004 amounts to passive holding and that this does not establish that Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(a)(i) and (iii).  See Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

Furthermore, Complainant asserts that Respondent has offered to sell the company Broadacom Ltd. to Complainant.  Complainant contends that this offer includes the offer to sell the <broadacom.com> domain name registration.  The Panel finds that Respondent’s willingness to sell the rights to the disputed domain name, as well as its company, demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Furthermore, the Panel is aware that once Complainant makes a prima facie case in support of Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Registration and Use in Bad Faith Policy ¶ 4(a)(iii).

Complainant argues that Respondent’s offer to sell the company Broadacom Ltd. to Complainant amounts also to an offer to sell the <broadacom.com> domain name registration to Complainant, the owner of the BROADCOM mark.  The Panel finds that Respondent’s general offer to sell its company and, presumably, the disputed domain name registration, is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (“[G]eneral offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where Respondent made no use of the domain names except to offer them for sale to Complainant).

While Policy ¶ 4(b) lists four circumstances which constitute evidence of bad faith registration and use if they are found to be present, this list is not intended to be a limitation on finding evidence of bad faith registration and use.  In fact, additional factors are being used by the Panel to support findings of bad faith registration and use.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

Complainant asserts that Respondent has not used the <broadacom.com> domain name and that any use of the disputed domain name by someone not connected to or authorized by Complainant would be an infringing use, because Complainant is very well-known in the broadband communication industry and throughout the world.  Thus, the Panel finds that Respondent’s failure to use the disputed domain name amounts to passive holding and is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  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 Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); 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).

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

___________________________________________________

Richard B. Wickersham, Judge (Ret.), Panelist
Dated:  February 4, 2005

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