Pervasive Software, Inc. v. Michael Biber
Claim Number: FA0112000102760
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”).
The domain name at issue is <pervasive.biz>, registered with Tucows, Inc.
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.
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.
Transfer of the domain name from Respondent to 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.
No timely Response was received.
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.
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.
The Panel finds that STOP ¶ 4(a)(i) has been satisfied.
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.
The Panel finds that STOP ¶ 4(a)(iii) has been satisfied.
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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