START-UP TRADEMARK OPPOSITION POLICY

DECISION

Pervasive Software, Inc. v. Michael Biber

Claim Number: FA0112000102760

PARTIES

The Complainant is Pervasive Software, Inc., Austin, TX (“Complainant”) represented by Leslie C. McKnew, of Brobeck, Phleger & Harrison LLP.  The Respondent is Michael Biber, Enmore, Australia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pervasive.biz>, registered with Tucows, Inc.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on December 6, 2001; the Forum received a hard copy of the Complaint on December 11, 2001.

On December 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

Having received no Response from Respondent by January 2, 2002, 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 January 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin as the single 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 STOP Rules.  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant has rights to its PERVASIVE trademark.

Respondent does not have rights or legitimate interests in <pervasive.biz>.

Respondent registered <pervasive.biz> in bad faith.

B. Respondent

No timely Response was received.

FINDINGS

Complainant began use of its PERVASIVE family of marks at least as early as July 1996.  Complainant registered the PERVASIVE.SQL (U.S. Reg. No. 2306518) and PERVASIVE SOFTWARES (U.S. Reg. Nos. 2296316 and 227398) trademarks on the Principal Register of the United States Patent and Trademark Office.  Additionally, Complainant owns the trademark registration for the above trademarks as well as for the PERVASIVE trademark in numerous other countries including, but not limited to, China, Australia, Japan, France, Germany, and Canada.

Complainant also owns applications that have been approved for its BUILT ON PERVASIVE and BUILT ON PERVASIVE SOFTWARE as well as published applications for its PERVASIVE mark.

Complainant uses its PERVASIVE family of trademarks in connection with its computer-related services and software.  Complainant’s services include: data extraction, storage and management services, computer training and seminars, computer software design, and consultation and support services.

Complainant, through its PERVASIVE trademark, has developed a great deal of goodwill by serving a worldwide channel of more than 10,000 businesses and having received several awards for its services and business.

Complainant has also established a presence on the Internet through its <pervasive.com>, <pervasive.info>, <pervasivesoftware.com>, <pervasive-inc.com>, <pervasive-sw.com>, <pervasivecomputingdivision.com>, and its <pervasive-business.com> domain names.

Respondent registered <pervasive.biz> on November 19, 2001 well after Complainant began use of its mark.

DISCUSSION

Paragraph 15(a) of the STOP 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.”

This Panel is aware that a Response was filed at least one week after the deadline set by the Forum, and has therefore declined to consider the Response in reaching its decision.  The Panel also did not consider the Additional Submission filed by Complainant.

In view of Respondent's failure to submit a timely 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 STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical 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 or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has demonstrated rights in the PERVASIVE mark through its registration of the mark in several jurisdictions as well as its substantial use of the mark.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it ‘has rights’ under the ICANN Policy).

The Panel finds that STOP ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

The Panel is permitted to make all inferences in favor of Complainant when Respondent has failed to respond to the Complaint.  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”).

Respondent’s failure to provide a Response indicates that Respondent has no rights or legitimate interests.  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’s failure to furnish any evidence of a business plan for the domain can be evidence that Respondent is not planning to use the domain for a bona fide offering of goods pursuant to STOP ¶ 4(c)(ii).  See 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 the 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).

Respondent has not brought forth any evidence to show that it is commonly known by the disputed domain name or owns a service or trademark identical to the domain name.  This demonstrates that Respondent has no rights or legitimate interests pursuant to STOP ¶ 4 (c)(i) and 4(c)(iii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); 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).

The Panel finds that STOP ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

Due to Complainant’s well-known global trademark and its many websites incorporating the PERVASIVE mark, the Panel can conclude that Respondent knew or should have known of Complainant’s mark.  Respondent’s very registration of an identical domain name suggests opportunistic bad faith.  See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith.  Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

Moreover, Respondent has demonstrated bad faith by registering a domain that is likely to be falsely associated with Complainant’s services by Internet users.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

The Panel finds that STOP ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under STOP, the Panel concludes that the requested relief shall be hereby granted.

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

Sandra Franklin, Panelist

Dated: January 22, 2002

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