Digitalbroadcom.com

The timeline behind digitalbroadcom.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Broadcom Corporation v. Arya Web Services Claim Number: FA0507000523720 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 Arya Web Services (“Respondent”), b/4 Shanti Apt. No. 2, Mumbai, Maharashtra, 400067, India. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <digitalbroadcom.com>, registered with Tucows Inc. 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. P-E H Petter Rindforth as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2005. On July 26, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <digitalbroadcom.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 July 27, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 16, 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@digitalbroadcom.com by e-mail. An untimely Response was received and determined to be complete on August 20, 2005. An Additional Submission from the Respondent was received by the Forum on September 2, 2005. This Additional Submission did not comply with the Forum’s Supplemental Rule 7 and therefore was not considered by the Panel. On August 25, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. P-E H Petter Rindforth as Panelist. Respondent’s Response was received four days after the prescribed response deadline and was received in electronic format only. However, Respondent states that they had encountered communication problems because of a flood, and that, accordingly, Respondent’s office had to be closed for “more than a week”. As the late Response was received before a panelist was appointed, this Panel accepts the alleged reason for the late Response and will consider the same as timely received. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000). RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant states that it is a global leader in highly integrated semiconductors for wired and wireless broadband communications. Complainant provides computing and networking equipment, digital entertainment products, mobile devices and similar products, with software solutions. Complainant has customer relationships with a number of companies in the said industry area, such as Apple, Cisco Systems, Dell, Hewlett-Packard, IBM, Motorola and Sony Ericsson. The revenue for the year ending 2004 was approximately $2.4 billion. Complainant contends that the disputed Domain Name is confusingly similar to Complainant’s well-known trademark BROADCOM. Complainant further contends that Respondent has no rights or legitimate interest in the Domain Name. Finally, Complainant states that Respondent has registered and is using the disputed Domain Name in bad faith. The Domain Name is registered with the intention to divert Internet users, attempting to locate Complainant’s website at <broadcom.com>. The BROADCOM trademark is so obviously connected with Complainant that the use as such of the Domain Name suggests bad faith. Complainant argues that Respondent had constructive knowledge of Complainant’s trademark. B. Respondent Respondent is a domain name reseller and claims to have registered the Domain Name on June 29, 2005 for one of its clients, Saibaba Enterprises. Respondent asserts that it has “nothing to do” with the Domain Name but that it is unable to change the WHOIS information. Respondent wants to place the said Saibaba Enterprises as the holder of the Domain Name. FINDINGS Complainant is the owner of five U.S. Trademark Registrations for BROADCOM (word marks and design marks), four pending U.S. Trademark Applications and two Indian Trademark Applications (Nos. 855,367 (BROADCOM) and 877,840 (BROADCOM & Design)), all predating the contested Domain Name (printouts from databases and confirmation letters provided as Annex B and C of the Complaint). The Domain Name was registered on June 29, 2005 in the name of Arya Web Services (Respondent). According to Rule 1 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), “Respondent” means the holder of a domain-name registration against which a complaint is initiated. Respondent in this proceeding is therefore Arya Web Services and not Saibaba Enterprises. See Regal Removals v. Bradshaw, D2003-0832 (WIPO Feb. 5, 2004) (stating that “the Rules are quite explicit that the Respondent in a UDRP proceeding is the Registrant of the domain name at issue”). 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. Identical and/or Confusingly Similar Complainant is the owner of the BROADCOM trademark. The relevant part of the Domain Name is “digitalbroadcom.” “Digital” is a generic addition, with no distinctiveness. See Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000). The term “digital” is commonly used in connection with Complainant’s goods and services (broadband communications, etc). The Panel finds that the Domain Name is confusingly similar to Complainant’s BROADCOM trademark, and accordingly finds for Complainant under Policy ¶ 4(a)(i). Rights or Legitimate Interests It is an undisputed fact that Respondent is not licensed or authorized by Complainant to use the BROADCOM trademark. Respondent has no trademark rights to DIGITAL BROADCOM or BROADCOM, nor is Respondent commonly known by the Domain Name. The lack of rights or legitimate interests are confirmed by Respondent, in its Response, stating that “we have nothing to do with this domain.” The Panel concludes that Respondent has no rights or legitimate interests in the Domain Name, and finds for Complainant under Policy ¶ 4(a)(ii). Registration and Use in Bad Faith To fulfill the third requirement, Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall be evidence of the registration and use of a domain name in bad faith. Although there is no clear and undisputable evidence of any of the circumstances of Paragraph 4(b) of the Policy, those circumstances are given “in particular and without limitation.” That is, the Panel is free to hold that other factors may be evidence of registration and use in bad faith. As stated above, the disputed Domain Name was registered on June 29, 2005 and the Complaint was filed on July 26, 2005. Although the Panel accepts Respondent’s reference to the severe weather conditions as an acceptable excuse for filing the late Response, this is no explanation why Respondent a) registered the Domain Name in its own name, and b) if this was done by mistake, did not made any effort to transfer the Domain Name to Saibaba Enterprises during the twenty-seven days between the registration and the filing of the Complaint. See also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000), in which the panel dismissed the respondent’s assertions that it is not the true owner of the domain names, stating: For the Administrative Panel the relevant fact is that the Domain Name registrations are still today in Respondent’s name. Consequently Respondent is in a position to transfer the Domain Names, without prejudice if so wished. By refusing to transfer the Domain Names while at the same time acknowledging that he has no rights or legitimate interests in them, Respondent knowingly prolongs a situation which is at odds with the legal rights of the parties involved and knowingly obstructs the registration of the Domain Names in the name of Complainant and their subsequent use by Complainant. Id. In fact, the Domain Name is not just registered in Respondent’s own name, but all contact details on the Registrar’s level refers to Respondent. The Panel is not convinced that Respondent has made any efforts to register or transfer the Domain Name to the alleged client, Saibaba Enterprises. Respondent is a domain name reseller and has therefore presumably a higher level of knowledge regarding domain names, registration procedures and the ICANN Rules than many other commercial domain name holders. By registering the Domain Name in its own name, Respondent has assumed the same obligations as any other domain name registrant. A legal presumption of bad faith arises when a respondent had constructive knowledge of a complainant’s trademarks at the time of registration. In this case, constructive knowledge of Complainant’s rights in BROADCOM may be imputed to Respondent referring to the fact the BROADCOM trademark has been registered in the United States since January 27, 1998 and there are pending Indian applications filed in 1999, well prior to Respondent’s registration of the disputed Domain Name. See Broadcom Corp. v. Lumacang, FA 361182 (Nat. Arb. Forum Dec. 23, 2004). The Domain Name is linked to a so-called “parking site”, with the usual information for such websites: “Under construction. Please check back soon.” However, in this case, the parking site is extended as it also contain the words “digital BroadCom™ ,” “DBC,” “The HEARTBEAT of HFC Network,” “Contact: Saibaba Enterprises” as well as telephone and e-mail to the said company. Accordingly, Respondent – presumably in charge and full control of the Domain Name in its capacity of Registrant, Administrative and Technical Contact – has linked the Domain Name to a web site using “digital BroadCom” as a trademark, together with references to other entities that may well be competitors of Complainant. The Panel concludes that such use, even if it is not listed in particular in Paragraph 4(b) of the Policy, must be considered as use in bad faith. After carefully weighing all the evidence available, the Panel holds that Respondent has registered and is using the disputed Domain Name in bad faith. The Panel concludes that Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy. 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 <digitalbroadcom.com> domain name be TRANSFERRED from Respondent to Complainant. P-E H Petter Rindforth, Panelist Dated: September 8, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.