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Generic Top Level Domain Name (gTLD) Decisions |
Broadcom Corporation v. LaPorte Holdings,
Inc.
Claim
Number: FA0412000384723
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 LaPorte Holdings, Inc. (“Respondent”),
2202 S. Figueroa Street, Ste. 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwbroadcom.com>, registered with Nameking.com,
Inc.
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.
Hon.
Ralph Yachnin Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
15, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on December 16, 2004.
On
December 16, 2004, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <wwwbroadcom.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified
that Respondent is
bound by the Nameking.com, Inc. 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
December 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of January 10, 2005 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@wwwbroadcom.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
January 14, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Hon. Ralph
Yachnin 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 <wwwbroadcom.com>
domain name is confusingly similar to Complainant’s BROADCOM mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwbroadcom.com> domain name.
3. Respondent registered and used the <wwwbroadcom.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Broadcom Corporation, has used the BROADCOM mark in connection with providing
highly integrated silicon solutions that
enable broadband communications and
networking of voice, video and data services in the field of digital broadband
communications
since as early as November 1994, and has been using the mark
continuously ever since. Complainant
also designs, develops and supplies complete system-on-a-chip solutions and
related hardware and software applications
for every major broadband
communications market.
Complainant
holds 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 October 10, 2000; Reg. No. 2,326,387, issued March 7,
2000; Reg. No. 2,625,799,
issued September 24, 2002; Reg. No. 2,595,174, issued
July 16, 2002).
Respondent
registered the <wwwbroadcom.com> domain name on November 11,
2004. Respondent is using the domain
name to redirect Internet users to a website that hosts a search engine which
provides links to a variety
of websites dealing with unrelated products and
services. These websites range from
sites involving football tickets to sites for freight trucks and networking
hardware.
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 United States Patent and Trademark
Office and through continued use of its
mark in commerce for the last ten years.
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
domain name is confusingly similar to Complainant’s BROADCOM mark because the
domain name incorporates Complainant’s
mark with the addition of the generic
“world wide web” abbreviation “www.” See
Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding
that the letters "www" are not distinct in the "Internet
world" and
thus Respondent 's <wwwmarieclaire.com> domain name is
confusingly similar to Complainant's MARIE CLAIRE trademark); see also
Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002)
(holding confusing similarity has been established because the prefix
"www" does
not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark);
see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328
(Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com>
domain name confusingly similar to Complainant's
registered DANA mark because
Complainant's mark remains the dominant feature).
Furthermore, the
addition of the top-level domain “.com” does not sufficiently distinguish the
disputed domain name from Complainant’s
BROADCOM mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain
(gTLD) “.com” after the name POMELLATO is not relevant); see
also Snow Fun, Inc. v. O'Connor,
FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to Complainant’s TERMQUOTE
mark); see
also Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the
addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name
registrants").
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
alleges that Respondent has no rights or legitimate interests in the domain
name that contains in its entirety Complainant’s
mark. Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and
legitimate interests
in the disputed domain name. In fact, once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it does
have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). 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); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstance
which
could demonstrate any rights or legitimate interests in the 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).
Moreover, when
Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”);
see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact
in the allegations of the Complaint to be deemed
true).
Respondent is
using the <wwwbroadcom.com> domain name to redirect Internet users
to a website that features a search engine for a variety of unrelated products
and services. Respondent’s use of a
domain name confusingly similar to Complainant’s BROADCOM mark to redirect
Internet users to the search engine
is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant
to Policy ¶ 4(c)(iii). See
Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003)
(holding that Respondent’s use of the disputed domain name, a simple
misspelling of Complainant’s
mark, to divert Internet users to a website that
featured pop-up advertisements and an Internet directory, was neither a bona
fide
offering of goods or services nor a legitimate noncommercial or fair use
of the domain name); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (holding
that Respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a
bona fide offering of goods
or services nor a legitimate noncommercial or fair use of the domain name); see
also Computer Doctor Franchise Sys.,
Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding
that Respondent’s website, which is blank but for links to other websites, is
not a legitimate use of the domain names).
Moreover,
Respondent has not offered any evidence and there is no proof in the record to
reflect that Respondent is commonly known
by the <wwwbroadcom.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because Respondent is not commonly known by
the disputed
domain name or using the domain name in connection with a legitimate or fair
use).
Furthermore,
Respondent has no rights or legitimate interests in the <wwwbroadcom.com>
domain name because Respondent has engaged in typosquatting by taking advantage
of Internet users who mistakenly omit the period
between “www” and
Complainant’s mark when users attempt to access Complainant online. See Diners Club Int’l Ltd. v. Domain
Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights
or legitimate interests in the disputed domain name vis-à-vis
Complainant); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat.
Arb. Forum Feb. 6, 2003)
(finding no rights or legitimate interests where Respondent merely redirected
the <wwwmedline.com> domain name
to Complainant’s own website at
<medline.com>); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding
no rights or legitimate interests where Respondent used the typosquatted
<wwwdewalt.com>
domain name to divert Internet users to a search engine
webpage, and failed to respond to the Complaint).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent’s
domain name diverts Internet users who seek Complainant’s BROADCOM mark to
Respondent’s search engine website through
the use of a domain name that is
confusingly similar to Complainant’s mark.
The Panel infers that Respondent commercially benefits by receiving
click-thru fees by directing Internet users to commercial websites
via the
search engine. Respondent intentionally
registered a domain name that contains in its entirety, Complainant’s mark and
did so in bad faith pursuant
to Policy ¶ 4(b)(iv). See Bank of America Corp. v. Out Island Props., Inc., FA
154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed
domain names contain entire versions of Complainant’s
marks and are used for
something completely unrelated to their descriptive quality, a consumer
searching for Complainant would become
confused as to Complainant’s affiliation
with the resulting search engine website” in holding that the domain names were
registered
and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract
users to a website
sponsored by Respondent).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith registration and use
of a domain name, additional factors
can also be used 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) (“the examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive”).
Respondent’s
registration of a domain name that incorporates Complainant’s well-known
registered mark in its entirety and deviates
only with the addition of the top
level domain “.com” and the generic world wide web abbreviation “www,” suggests
that Respondent
knew of Complainant’s rights in the BROADCOM mark. Moreover, the mark is registered with the
United States Patent and Trademark Office, which confers constructive knowledge
with Respondent. Thus, the Panel finds
that Respondent chose the <wwwbroadcom.com> domain name based on
the distinctive and well-known qualities of Complainant’s mark. Registration of a domain name confusingly
similar to a mark, despite knowledge of another’s rights, is evidence of bad
faith registration
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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the “domain names are so obviously connected with
the Complainants that the use or
registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
Moreover, the
Panel finds that Respondent has registered and used the domain name in bad
faith pursuant to Policy ¶ 4 (a)(iii) because
Respondent has engaged in
typosquatting. See Canadian Tire
Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (holding that “[the] absence of a dot between
the ‘www’ and ‘canadiantire.com’ [in the <wwwcanadiantire.com>
domain
name is] likely to confuse Internet users, encourage them to access
Respondent’s site” and evidenced bad faith registration
and use of the domain
name); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off
traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith”)
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwbroadcom.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 28, 2005
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