Pivotal Corporation v. Pivotal Services Limited (formerly Graeme Clemett & Associates Limited)
Claim Number: FA0204000112602
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.
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.
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
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.
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,
Dated: 24 June 2002
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