DECISION

Pervasive Software Inc. v. Domain Research and Sales

Claim Number: FA0201000104106

PARTIES

Complainant is Pervasive Software, Inc., Austin, TX (“Complainant”) represented by Leslie C. McKnew, of Brobeck, Phleger & Harrison LLP.  Respondent is Domain Research and Sales, Radviliskis, LITHUANIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pervasive.net>, registered with Dotster, 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.

Hon. Ralph Yachnin, Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 24, 2002; the Forum received a hard copy of the Complaint on January 28, 2002.

On January 30, 2002, Dotster, Inc. confirmed by e-mail to the Forum that the domain name <pervasive.net> is registered with Dotster, Inc. and that Respondent is the current registrant of the name.  Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 January 31, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 20, 2002 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@pervasive.net 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 February 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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

Respondent’s <pervasive.net> domain name is identical to Complainant’s PERVASIVE mark.

Respondent does not have rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

No Response was submitted.

FINDINGS

Complainant owns numerous trademark registrations incorporating the PERVASIVE mark in over 24 different countries, including its registrations of PERVASIVE (Reg. No. 2,516,028) and PERVASIVE SOFTWARE (Reg. No. 2,296,316) on the United States Principal Register on December 11, 2001 and November 30, 1999 respectively.  Previous to the U.S. registration of this mark, Complainant had been using the mark continuously since July1996, and had established common law rights in the PERVASIVE mark.

Since 1996, Complainant has promoted its marks in over 80 countries worldwide, and currently serves a worldwide network of 10,000 businesses.  As evidence of the widespread recognition of the PERVASIVE marks, Complainant has received many awards including listings in the 2001 DM Review Top 100, which recognizes the top 100 business intelligence vendors, and FORBE’S ASAP list of 1999’s 100 Most Dynamic Technology Companies, in which Complainant ranked third. 

Respondent registered the disputed domain name on July 2, 2001.  Respondent listed the registrant’s name as “For SALE” and stated that “This Domain Name is FOR SALE, E-Mail us your offer,” then listed its contact e-mail address at offers@NameRegister.com.  Moreover, Respondent offered the disputed domain name for sale on the opening page of the website associated with the disputed domain name.

Respondent has a history of registering famous marks as domain names and offering to sell them to parties for no less than $550.  Examples of Respondent’s pattern of registering infringing domain names include the following domain names:  <moneyopolis.org>, <singtel-mobile.com>, <segod.com>, and <webmolecules.com>, among others.

Finally, Respondent has linked the disputed domain name to pornographic and adult-orientated websites. 

 

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 the 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 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; and

(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 has established common law rights in the PERVASIVE mark through its continuous use of the mark since 1996, as well as legal rights due to its subsequent registration of the PERVASIVE mark with the USPTO on December 11, 2001.

Respondent’s <pervasive.net> domain name is identical to Complainant’s PERVASIVE mark because it incorporates Complainant’s mark in its entirety and merely add “.net” which is irrelevant for purposes of determining whether the disputed domain name is identical to Complainant’s 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 The Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES) In addition to Complainant’s common law rights in PERVASIVE , it had, and continues to hold, legal rights to PERVASIVE SOFTWARE at the time Respondent registered the disputed domain name.  Respondent’s disputed domain name is confusingly similar to PERVASIVE SOFTWARE because the domain name merely deletes one word, “software”, while isolating “PERVASIVE”, the central term in all of Complainant’s trademarks.  See Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to complainant’s registered SUNKIST mark and identical to complainant’s common law SUNKIST GROWERS mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also Maple Leaf Sports & Entertainment Ltd. v. Toronto Maple Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name <leafs.com> is confusingly similar to Complainant’s marks, where Complainant holds many trademarks that contain the term LEAFS).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Because Respondent did not submit a Response to this Complaint, the Panel may infer that it has no rights or legitimate interests in the disputed 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).

Respondent has registered the disputed domain name with the primary intention of selling it; as this is not considered a bona fide offering of goods, Respondent does not have any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i).  See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

There is no evidence, and Respondent, known as “Domain Research and Sales”, has not come forward to provide any, that it is commonly known by the “PERVASIVE” mark or by “<pervasive.net>.”  As a result, Respondent has not demonstrated rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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 prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Complainant has not used the disputed domain name for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because it linking the disputed domain name to a third party site offering pornography.  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

            Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because Respondent listed its name as “For SALE,” its email address as “offers@NameRegister.com,” and made blatant offers to sell the disputed domain name on the opening pages of its website, there is evidence that Respondent registered the disputed domain name primarily for the purpose to sell it, and therefore, registered the domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name).

Respondent also has a history of purchasing and selling infringing domain names for no less than $550, which is a price above that which Respondent purchased the domain name for.  As a result, Respondent’s behavior indicates that it has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii).  See Nabisco Brands Co. v. The Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith); see also Encyclopedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).

Respondent’s use of the disputed domain name to link to pornographic material is evidence of bad faith registration and use.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <pervasive.net> domain name be transferred from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: February 27, 2002

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