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Generic Top Level Domain Name (gTLD) Decisions |
Pivotal Corporation v. Pivotal Services
Limited (formerly Graeme Clemett & Associates Limited)
Claim Number: FA0204000112602
PARTIES
Complainant
is Pivotal Corporation, Vancouver,
BC, CANADA (“Complainant”) represented by Robert
J.C. Deane, of Borden Ladner Gervais
LLP. Respondent is Pivotal Services Limited (formerly Graeme
Clemett & Associates Limited), Wellington, NEW ZEALAND (“Respondent”)
represented by John M. Morrison of Lambton
Chambers.
The
domain name at issue is <pivotal.biz>,
registered with Register.com.
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.
Alan
L. Limbury as Panelist.
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 April 25, 2002, naming
Graeme Clemett and Associates Limited as Respondent.
The Forum received a hard copy of the Complaint on April 26, 2002.
On
May 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 21,
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”).
A
timely Response was received and determined to be complete on May 20, 2002. The
Response named as Respondent “Pivotal Services Limited
(formerly Graeme Clemett
and Associates Limited)”.
Complainant
submitted a timely additional submission on May 24, 2002 pursuant to Forum
Supplemental Rule 7. Respondent filed a
timely additional submission on May 28, 2002, also in accordance with
Supplemental Rule 7.
On June 13, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Alan L. Limbury as
the single Panelist.
Supplemental submissions
In
its carefully reasoned decision in America Online, Inc. v. Adrian Paul Miles
d/b/a AD2000D.com (FA 105890)(Nat. Arb. Forum May 31, 2002), a
distinguished 3-member Panel found that Forum Supplemental Rule 7 to the UDRP
is inconsistent
with the UDRP, that it goes beyond what has been mandated and
defined in the UDRP, and that no Provider can encroach upon the broad
discretion given to the Panel by the UDRP and the UDRP Rules. The Panel
concluded:
“The
Supplemental Rules were never intended to provide a vehicle for permitting
additional pleadings or for circumventing the discretion
vested in the
Panel. The Panel has an affirmative
duty to see that it exercises its unfettered discretion in calling for additional
submissions and to
insure that the matter proceeds expeditiously. No Supplemental Rule can override this
discretion and obligation. Accordingly,
the Panel will not accept the Respondent's additional Response, for which no
permission was sought from the Panel.”
With
one exception, the relevant STOP and STOP Rules and the Forum Supplemental STOP
Rules are identical in wording (and numbering)
to their UDRP counterparts. The exception is that while the definitions
of “Supplemental Rules” in UDRP Rule 1 and STOP Rule 1 both state that
Supplemental Rules shall not be inconsistent with the Policy or Rules, UDRP
Rule 1
contains the additional statement “and shall cover such topics as
fees, word and page limits and guidelines, the means of communicating with the
Provider and the Panel,
and the form of cover sheets”. Those additional words no doubt led the
Panel in that case to say: “the matters to be governed by the
Supplemental Rules are ministerial in nature.”
In the opinion of this Panel, the very next sentence in
that Panel’s decision is equally applicable under STOP Policy, despite the
shorter definition of “Supplemental
Rules” in STOP Rule 1: “Nowhere in the definition is a provision for
permitting additional pleadings to be filed upon a payment to the provider.”
For
the reasons set out in America Online, Inc. v. Adrian Paul Miles d/b/a
AD2000D.com, this Panel finds Forum Supplemental STOP Rule 7 is
inconsistent with the STOP, that it goes beyond what has been mandated and
defined
in the STOP, and that no provider can encroach upon the broad
discretion given to the Panel by the STOP and the STOP Rules.
Nevertheless,
the Panel considers it appropriate in the circumstances of this case, in the
interests of ensuring, under Rule 10(b),
that each party is given a fair
opportunity to present its case, to receive each party’s Supplementary
Submission as if the Panel
had requested them under Rule 12.
Complainant
objected to any change to the style of these proceedings because the disputed
domain name was and remains registered in
the name Graeme Clemett and
Associates Limited. However, Respondent
has produced evidence that a company was incorporated in 1999 in New Zealand
under that name and that it has lawfully
changed its name to Pivotal Services
Limited. The Panel is satisfied that
the name Pivotal Services Limited is the present name of the corporate entity
which applied to register
the disputed domain name and that it is appropriate
to intitule these proceedings as being brought against “Pivotal Services
Limited
(formerly Graeme Clemett Limited)” as Respondent.
The
Complainant’s submissions proceed on the basis that the name of the Respondent
is Graeme Clemett and Associates Limited and this
should be taken into account
in reading what follows.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
is the registered proprietor in Canada, the United States and elsewhere of the
trademark PIVOTAL (and other marks incorporating
that word) in relation to
certain computer software and related technical support services. Complainant
also has common law rights
in the mark PIVOTAL in New Zealand, where it has had
business operations since 1997.
The
disputed domain name is identical to Complainant’s mark PIVOTAL.
Respondent
has no rights or legitimate interest in the disputed domain name because:
·
it is not a
legal person, according to the New Zealand companies registry;
·
it has no
trademark rights in the word pivotal;
·
it has not
used or made demonstrable preparations to use the disputed domain name in
connection with a bona fide offering of goods or services before notice
of Complainant’s IP Claim;
·
the
disputed domain name does not resolve to a functioning website;
·
simply
holding a domain name does not give rise to rights or legitimate interests in
it;
·
there is no
evidence Respondent is commonly known by the disputed domain name;
·
Respondent
has not registered domain names corresponding to its name in the <.biz>,
<.com>, <.org> or <.net>
TLDs. Assuming the registrant of
<gca.co.nz> is Respondent, it already has a domain name corresponding to
its name;
·
Respondent
cannot establish a right or legitimate interest in depriving Complainant of the
right to register a <.biz> domain
name corresponding to its own name;
·
any use of
the disputed domain name would infringe Complainant’s trademark;
·
bad faith
registration and use cannot give rise to legitimacy; and
·
Complainant
has not authorized Respondent to use its mark.
Respondent
registered and is using (by non-use) the disputed domain name in bad faith
because:
·
Respondent
is not a legal person and therefore provided incorrect or misleading
information in its registration application;
·
the domain
name was registered in order to prevent Complainant from registering <pivotal.biz>
because (a) of the absence of rights or legitimate interests; (b) any use of
the disputed domain name will inevitably be associated
with Complainant; and
(c) Respondent proceeded with registration in the face of Complainant’s IP
Claim which “almost preclude[s] the possibility of registration in good
faith”: Gene Logic, Inc. v. Bock (FA 103042)(Nat. Arb. Forum March
4, 2002) and is strong circumstantial evidence of bad faith registration;
·
Respondent
having been put on notice of Complainant’s renowned trademarks, yet having
persisted with its domain name registration,
it must be inferred that
Respondent intended to benefit commercially from Internauts who will mistakenly
believe the domain name
is associated with Complainant
B.
Respondent
The
disputed domain name is not identical to Complainant’s mark.
The
Complaint is based on the false propositions that Respondent does not exist and
that Respondent has no right or intention to use
the disputed domain name.
Respondent
was incorporated in New Zealand in 1999 as Graeme Clemett and Associates
Limited. Since late 2001 its name has
been Pivotal Services Limited. Its business is to supply project management
services in company project
marketing, print tendering and procurement, agency
production management and project personnel recruitment.
As
part of a re-branding exercise, a proposed new company name incorporating the
word pivotal was approved by the New Zealand Registrar
of Companies in May
2001. The application to register the disputed domain name was made in the then
name of Respondent (Graeme Clemett
and Associates Limited) as part of the
re-branding process, with the intention to provide internet and email services.
The formal
launch of the re-branded company under its present name (Pivotal
Services Limited) took place on 21 March 2002. Because of delay
in the
establishment of the .biz registry, Respondent registered an alternative web
address, <pivotalservices.co.nz> in order
to complete the re-launch.
Since the disputed domain name was allocated to Respondent on 16 April 2002,
the “cooling off” period
has prevented its use until this dispute is resolved.
The
identification of Respondent in its market as “pivotal” is complete, and with
that its entitlement to use “pivotal” in connection
with its web address.
Under
these circumstances Respondent has rights and legitimate interests in the
disputed domain name and did not register and has
not used it in bad faith.
C.
Additional Submissions
Respondent
cannot amend the style of the cause. It attempts to rely on events that have
occurred since the delayed start-up of the
.biz registry. The claim must be
decided on the basis that the proper Respondent is the named registrant, namely
Graeme Clemett &
Associates Limited
The
disputed domain name is identical to the PIVOTAL trademark
The
contemplated “re-branding” does not give rise to legitimate rights or interests
in the disputed domain name because:
·
Respondent’s
claim must be assessed as it stood at the time of its application for the
disputed domain name in June or July 2001.
The STOP Policy should not be
interpreted to Complainant’s prejudice so as to allow Respondent, in order to
cure a defect in its
application, to take advantage of the various unexpected
legal complications which delayed distribution of <.biz> domains by
the
Registrar, NeuLevel, from October 2001 until March 2002;
·
Respondent
applied to register the disputed domain name almost 6 months before its change
of corporate name, 9 months before it alleges
it began using the PIVOTAL mark
and almost 10 months before the disputed domain name was assigned to it;
·
at the time
of its application, Respondent had no rights or legitimate interests in the
disputed domain name. The re-branding was
simply a proposal. Its “brandplan”
was developed several months after it had applied to register the disputed
domain name. The name
change took place in November 2001 and was not publicized
until March 2002. Its bank accounts were not changed until April 2002;
·
the
application was, at best, a calculated attempt
to preserve its ability to adopt the PIVOTAL mark at some undefined
point in the future, when its “re-branding“ had been completed. It was a speculative registration by an
entity with no connection with the PIVOTAL mark or the disputed domain name.
As
to bad faith:
·
Respondent
does not dispute that it knew of Complainant’s trademark rights in the mark
PIVOTAL when it applied to register the disputed
domain name. As in Gene
Logic, Inc. v. Bock, proceeding in the face of this knowledge is “strong
circumstantial evidence of bad faith registration”;
·
Respondent
admits it registered the disputed domain name in order to hold it for possible
future use, after the corporate name had
been changed and its “significant”
re-branding had occurred;
·
Respondent
plainly registered the disputed domain name in order to prevent others, such as
Complainant, from registering it before
Respondent started and completed its
re-branding exercise. There was no other reason to register it at that time,
when Respondent
was still known by and conducting business using its former
name. It was a pre-emptive, blocking
registration.
·
Even if the
Panel accepts that Respondent subsequently used the disputed domain name in
commerce (which Complainant denies), this
cannot cure Respondent’s initial bad
faith registration.
It would be misleading to perpetuate Complainant’s error in
naming Respondent under its former name when under the laws of New Zealand
the
company formerly known as Graeme Clemett and Associates Limited had changed its
name to Pivotal Services Limited before the Complaint
was lodged.
Complainant’s
trademark cannot support an exclusive right to apply for and use the word
pivotal with a .biz extension. The stylized
PIVOTAL trademark does not give
Complainant the monopoly use of the word, particularly in the domain name
context where even the
style is different.
As
to legitimacy:
·
It was
sufficient, in order to gain .biz registration, that Respondent had a bona fide
intent to use the disputed domain name;
·
Respondent
was well down the track in terms of developing a brand based on the word
pivotal when application for the .biz extension
was made. This is sufficient to show bona fide intent;
and
·
it was
appropriate that Respondent made the application in its then corporate name.
As to bad faith :
·
there was
and is no evidence Respondent knew of Complainant’s mark nor that Respondent
had any reason to know (it being unregistered);
·
Respondent
denies it knew of Complainant’s trademark rights when it applied to register
the disputed domain name;
·
the
application was not akin to speculative registration nor was it a pre-emptive
or blocking registration. It was simply to secure
a domain name in the
furtherance of a corporate plan to re-brand itself as “Pivotal Services
Limited”.
In
summary, the Complaint, initially advanced on the false premise that Graeme
Clemett and Associates Limited was a non-existent entity,
now advances
unsubstantiated suspicion as the basis for depriving Respondent of a
legitimately applied for and secured registration
of the disputed domain
name. The evidence contradicts that
suspicion.
Complainant has not established all the
required elements to entitle it to relief.
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.”
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 be filed only 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, properly
brought, 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: Gene Logic Inc v. Cho Kyu Bock
(FA 103042).
Complainant
has established that it has rights in the Registered trademark PIVOTAL in
Canada and elsewhere but not in New Zealand.
Complainant has operated in New
Zealand since 1997 but the evidence does not show that Complainant has common
law rights in that
mark in that country nor that its mark is “renowned” in any
country, as asserted by Complainant.
The
disputed domain name is identical to Complainant’s registered trademark
PIVOTAL. There is no substance to Respondent’s contentions
to the contrary.
At
what time should this issue be determined? The competing possibilities are:
·
when
Respondent first applied to register the disputed domain name (not clear on the
evidence but said by Complainant to be in June
or July 2001);
·
when
Respondent had notice of Complainant’s IP claim (not clear on the evidence but
some time prior to 8 August 2001, when the IP
Claims period ended);
·
when the
disputed domain name was registered (16 April 2002); and
·
when the
Complaint was filed (26 April 2002)
In
this case, because of delays in the allocation of .biz domain names, between
application and registration of the disputed domain
name in the name of Graeme
Clemett and Associates Limited:
·
Respondent’s
name changed to Pivotal Services Limited; and
·
Respondent’s
re-branding was completed and the launch had taken place, thereby establishing
Respondent’s new identity in its field
as PIVOTAL.
Both
of these events occurred after notice to Respondent of Complainants IP Claim.
Complainant argues that the STOP Policy should
not be interpreted in such a way
as to enable Respondent to take advantage of the delay attributable to various
legal complications
in the distribution of <.biz> domains by the
registrar, NeuLevel.
The
language of STOP Policy paragraphs 4(c)(i) and (iii) and common sense suggest
that, for the purposes of those paragraphs, a legitimate
interest in a domain
name flows from an identical pre-existing name or mark. However, it is
unnecessary to decide upon the correct
interpretation of the STOP in this
regard because, on the evidence, the Panel is satisfied under paragraph
4(c)(ii) that Respondent
had a right and legitimate interest in the disputed
domain name when Respondent first applied to register it in June or July 2001.
In reaching this conclusion the Panel has had regard to the following:
·
the common
use of the word pivotal as an adjective and therefore the descriptive nature
(and hence weakness and lack of exclusivity)
of Complainant’s mark;
·
the absence
of any trademark registration of Complainant’s mark in New Zealand;
·
the absence
of evidence of common law rights to that mark in New Zealand;
·
the
evidence (provided by Complainant) that others have registered the same mark in
connection with other goods and services;
·
the absence
of any evidence that Respondent knew of Complainant or its mark before applying
to register the disputed domain name;
·
the
different fields of endeavour in which the parties are engaged;
·
contemporaneous
correspondence in the period 17 May 2001 to
6 June 2001 between Respondent and Origin Design Company Limited
(Response Ex.C) referring to official approval having been given
by 17 May 2001
for a new name for Respondent incorporating the word pivotal; vacillation by
Respondent over what its new corporate
name should be but no vacillation over
its desire to be known as “Pivotal 1st and foremost”; Respondent’s
awareness that “in July the domain names .biz will become available for the 1st
time” and its suggestions
on 6 June 2001 that the company be called Pivotal Biz
NZ Ltd and
“registering
pivotal.biz as the web address. If we
miss on pivotal.biz there is still pivotalbiz.co.nz pivotalbiz.com. This may
also help position ourselves as leading thinkers from a technology angle and
offers that generic possibility of what the
company may do in the future”;
Paragraph
4(c) of the STOP sets out, without limitation, circumstances which, if proved,
establish the registrant’s rights or legitimate
interests to the disputed
domain name. Sub-paragraph 4(c)(ii)
(which is identical to sub-paragraph 4(c)(i) of the UDRP) reads:
“(ii) before
any notice to you of the dispute, your use of, or demonstrable preparations to
use, the domain name or a name corresponding
to the domain name in connection with a bona fide offering of goods or
services;”
Even perfunctory preparations have been
held to suffice for this purpose: Shirmax
Retail Ltd. v. CES Marketing Group, Inc., AF-0104 (eResolution); Lumena
s-ka so.o. v. Express Ventures Ltd., FA 94375 (Nat. Arb. Forum) and Royal
Bank of Canada v. Xross, AF-0133 (eResolution).
The Panel finds
to be apposite to the circumstances of this case and to the word PIVOTAL the
following passage from the 3-member Panel’s decision in Goldline
International, Inc. v. Gold Line, D2000-1151 (WIPO) concerning the domain
name <goldline.com>:
“Preparations for developing a business
that could logically be marketed under a certain domain name can constitute
legitimate preparations
for use, even if the proposed business has no need to
use the exact name at issue. See, e.g., PRIMEDIA Special Interest Publications Inc. v. Treadway, Case No.
D2000-0752 (WIPO August 21, 2000) (preparations to develop photography-oriented
website created legitimate interest in
particular domain name
“shutterbug.com”). This is particularly
true in the case of a laudatory term such as “Gold Line,” which can
legitimately be adopted to describe a wide
range of businesses that do not
overlap with current registered users.
In other words, it is legitimate to build a service mark out of the
highly suggestive and diluted mark “Gold Line” for products or
services not the
same as or closely related to those covered by any existing registrations. CRS
Technology Corp. v. CondeNet, Inc., File No. FA0002000093547 (NAF March 27,
2000). Of course, the situation would
be very different were Complainant and Respondent competitors or in closely
related fields, or were
Complainant’s mark arbitrary or so famous that
consumers would be likely to perceive a connection across a wide range of goods
or
services. In such cases, it would be
unlikely that Respondent could develop a legitimate interest in using a domain
name confusingly similar
to Complainant’s mark”.
The
Panel is satisfied on the evidence that, at the time it applied to register the
disputed domain name (which was clearly before
any notice to it of this
dispute) Respondent had made preparations to use the word pivotal in its
corporate name as part of a re-branding
exercise and that Respondent’s
application to register the disputed domain name was made in furtherance of
this exercise.
Accordingly,
Complainant has not established this element.
Complainant
contends that Respondent proceeded with registration in the face of
Complainant’s IP Claim which “almost preclude[s] the possibility of
registration in good faith”: Gene
Logic, Inc. v. Bock and is strong
circumstantial evidence of bad faith registration.
The
words used by the learned Panel in that case, referring to the “Notice of a .biz Intellectual Property Claim”,
were:
“This
Notice may, in the proper case, almost preclude any possibility of
registration in good faith of a domain name under facts and circumstances
like the instant case.” [emphasis
added]
Then,
after quoting the terms of the Notice, which the Panel described as “unmistakable
warning of the existence of a conflict over intellectual property rights” the
Panel continued:
“This
written Notice is followed by detailed instructions on how to proceed, in spite
of the IP Claim, and several pages of details
on the nature of the existing
claim, the owner, the field of use, and the contact information. Only after reading all this, and electing to
proceed anyway, can the .biz registrant complete his or her application for the
domain
name.
Thus,
in the instant case of Respondent Cho Kyu Bock and his selection of the domain
<genelogic.biz>, he did so
with full knowledge that his intended business use of this domain name was in
direct conflict with a registered trademark of a known competitor in exactly
the same field of business”[emphasis
added].
The
facts of this case differ from those in Gene Logic. In that case the
combination
Genelogic was found to be a
particularly apt term for a strong trademark.
Here the mark is a single word commonly used as an adjective, is
therefore not a particularly apt term for a strong trademark and
is used by
others. As in Gold Line, there is nothing to stop use of the word
pivotal as a trademark in fields other than those of Complainant’s business.
The parties
are not competitors. They are in different fields of business.
Under these circumstances it would be entirely inappropriate in this
case to
conclude that the decision of Respondent to persist with its application to
register the disputed domain name in the face
of the notice of Complainant’s IP
rights is evidence of bad faith.
The
Panel is satisfied on the evidence that Respondent’s application to register
the disputed domain name was made without knowledge
of Complainant or its mark,
in furtherance of Respondent’s re-branding exercise. Respondent’s persistence
with its application in
the face of Complainant’s IP Claim was also in
furtherance of that exercise and without intent to gain the benefit of
Complainant’s
goodwill in its mark.
There
is no evidence of registration or use in bad faith. Complainant has not
established this element.
DECISION
Pursuant to STOP Rule 15(d), the Panel
finds that the dispute is not within the scope of paragraph 4(a) of the
STOP. The Complaint is dismissed.
The Panel determines that subsequent
challenges to the domain name <pivotal.biz> under the STOP, as
against the Respondent, shall not be permitted.
Alan L. Limbury,
Panelist
Dated: 24 June 2002
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