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