WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pivotal Corporation v. Discovery Street Trading Co. Ltd.
Case No. D2000-0648
1. The Parties
Complainant is Pivotal Corporation, 300-224 West Esplanade, North Vancouver, B.C., Canada, V7M 3M6.
Respondent is Discovery Street Trading Co. Ltd., 4304 West 12th Avenue, Vancouver, B.C., Canada, V6R 2R1.
2. The Domain Name and Registrar
The domain name at issue is "pivotalsoftware.com" [hereinafter referred to as the Domain Name].
The registrar of the Domain Name is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA, USA, 20170.
3. Procedural History
On June 21st, 2000 the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in an e-mail to the Complainant dated June 26th, 2000, a copy of which was sent to the Respondent by courier. In a letter dated the same date the Center informed the registrar, Network Solutions, that a complaint had been submitted to the Center regarding the Domain Name.
On July 3rd, 2000 the Registrar confirmed that the Domain Name had been registered via the Registrarís registration services and that the Respondent was the current registrant of the Domain Name.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organisation Supplemental Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on July 4th, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated July 4th, 2000 the Center informed the Respondent of the commencement of the proceedings as of July 4th, 2000 and of the rule providing for a response to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings, and I so find.
On July 22nd, 2000 the Center received a response [hereinafter the Response] from the Respondent within the 20 day limit as provided for by the Center. On July 24th, 2000 the Center acknowledged receipt of the Response to the Respondent and the Complainant [hereinafter referred to collectively as the Parties]. The Center also informed the Parties that an administrative panel would be appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
On July 28th, 2000 the Center received a reply to the Response [hereinafter the Reply] from the Complainant. Documents provided by the Center reveal that the Reply was received concurrently and acknowledged by the Respondent. On July 31, 2000 the Center received a reply to the Reply from the Respondent [hereinafter the Reply Response].
The Panel is obliged to issue a decision on or prior to August 14, 2000 (as the 13th is dies non), in the English language, and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.
4. Procedural Issues
As indicated above, during the present proceedings both a reply to the Response and a reply to the reply to the response were submitted by the parties. The Panel has reviewed the reply to the Response and the rebuttal to the Response, and finds that it is equitable for the Panel to consider them both. The Panel therefore allows the inclusion of both these documents in the present proceedings under its general powers of administration of the proceedings conferred by paragraph 10 of the ICANN Rules.
5. Factual Background
The Complainant is a legal person incorporated under the laws of British Columbia, Canada. The Complainant is a manufacturer of computer software with a global network of sales offices, resellers, system integrators and distributors. The Complainants products are sold through a worldwide network in 26 countries with more than 40 outlets.
The Respondent is a legal person incorporated under the laws of British Columbia, Canada. No information was provided by the Respondent as to businesses in which he is engaged.
The Domain Name was registered by the Respondent with the Registrar on July 30th, 1999.
The Complainant has registered a number of trademarks including "PIVOTAL" and some of its derivatives in relation to computer software. The registration for "PIVOTAL" was filed with the U.S. patent office and the Canadian Intellectual Property Office in July 1995.
Between 1995 and June 1999 the Complainant was known as "Pivotal Software Inc." and used "PIVOTAL software" in association with its software products and related services.
The Complainant is also the registered owner of the domain name "pivotal.com" which has been used as the terminating address for a website operated by the Complainant since January, 1996.
6. Partiesí Contentions
The Complainant alleges at paragraph 12 of the Complaint that he is an internationally known manufacturer of computer software and is a world leader in the relationship management software industry.
At paragraph 13 of the Complaint the Complainant maintains that he is the owner of the unregistered trademark "PIVOTAL software".
At paragraph 14 of the Complaint the Complainant alleges that prior to October 1999 the Respondent had subscribed for and was registered owner of 17 different domain names (including the Domain Name).
At paragraph 24 of the Complaint the Complainant alleges that unregistered trademark "PIVOTAL software" and the registered trademarks, including "PIVOTAL", have come to be associated with the Complainant, that the Complainant has developed a well known reputation and acquired substantial goodwill in these marks, that these marks are determinative and well known designations of source for the Complainantís goods and services, and that he enjoys the exclusive right to use the marks in Canada and preclude others using them.
The Complainant continues at paragraph 27 of the Complaint by alleging that the Domain Name is identical to the Complainantís mark, "PIVOTAL software" and that, at paragraph 29 to the Complaint, that the Domain Name is confusingly similar to the marks in which Complainant has rights, including "PIVOTAL software" and "PIVOTAL". The allegation as to confusing similarity between the Domain and the Complainants marks is reiterated at paragraph 32 to the Complaint.
At paragraph 33 of the Complaint the Complainant maintains that there are clear similarities between the Domain Name and the Complainants marks and that Internet users and consumers are likely to be confused into believing that there is some affiliation, connection, sponsorship, approval or association between the Complainant and the Respondent, when in fact, there is no such relationship.
The Complainant concludes, at paragraph 34 of the Complaint, that the Domain Name is identical to or at least confusingly similar to the Complainantís marks.
At paragraph 36 and 37 of the Complaint the Complainant alleges that the Respondent has no legitimate rights or interests in the Domain Name and that the Complainant never authorised, licensed or otherwise permitted the Respondent to use the Domain Name or any of the Complainantís marks. In support of this allegation, the Complainant maintains at paragraph 40 to the Complaint that none of the indicia identified in the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] are present, i.e. that the Domain Name has not been used by the Respondent as a domain name for an active website, that the Respondent is not commonly known by the Domain Name and that the Respondent is not making any non-commercial or fair use of the Domain Name.
At paragraph 42 of the Complainant the Complainant maintains that the Respondent could not have been unaware that he could not make legitimate use of the Domain Name at the time of registration.
At paragraph 49 of the Complaint, the Complainant maintains that all the elements of bad faith registration and use of the Domain Name are present as well as other elements of bad faith registration and use.
At paragraph 51 of the Complaint the Complainant maintains that the Respondent registered the Domain Name for the purposes of selling it to the Complainant. As basis for this allegation the Complainant, at paragraphs 52 and 53 to the Complaint, refers to the Complainants offer to pay the Respondentís transfer fees in exchange for the transfer of the Domain Name and the Respondentís refusal to transfer ownership except via an undisclosed "commercial resolution".
At paragraph 54 of the Complaint, the Complainant alleges that the Respondent registered prior to October, 1999, 17 domain names including the Domain Name. The Complainant further states the fact that the Respondent has not used the Domain Name for an active website necessarily means that the Respondent procured the Domain Name with the objective of selling it to the Complainant for an amount in excess of out of pocket expenses, amounting to bad faith use for the purposes of the ICANN Policy.
At paragraph 57 of the Complaint the Complainant maintains that the Respondent must have known of the existence of the Complainant, its marks, and that the Domain Name would be of value to the Complainant and therefore, given that the Respondent had no legitimate right or interest in the Domain Name, the logical conclusion is that it was procured to deprive the Complainant of its use.
Finally, at paragraph 65 of the Complaint, the Complainant maintains that the Respondent could not have bona fide represented and warranted in its application for registration of the Domain Name that he was entitled to the registration and that the registration would not infringe the rights of another person. The Complainant maintains that both the above are evidence of bad faith registration and use of the Domain Name for the purposes of the ICANN Policy.
The Respondent contends in the preamble to the Response that approximately one year ago it was searching for a domain name with marketing potential and settled on the Domain Name.
At paragraph 13 of the Response the Respondent maintains that the Complainantís statement to the effect that the mark "PIVOTAL software" is of fundamental importance to the Complainantís business is inconsistent with the Complainant not having registered the mark.
The Respondent continues at paragraph 14 of the Response by stating that it never offered to sell the Domain Name to the Complainant and that the Respondentís statement to the effect that the dispute should be "commercially resolved" did not amount to a sale. This statement is reiterated at paragraph 51 of the Response.
At paragraph 17 the Respondent also maintains that he is unaware of the trademarks held by the Complainant and at paragraph 18 that he had no knowledge of the Complainant or the Complainantís business prior to registering the Domain Name.
At paragraph 36 of the Response the Respondent asserts that he has a legitimate right and interest in the Domain Name as he intends to use it in the future. The intent to future use for the Domain Name is reiterated at paragraph 40 of the Response.
7. Discussion and Findings
Pursuant to the ICANN Policy the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
The general thrust of the Respondentís defense is that the mark "PIVOTAL software" is not a registered mark of the Complainant and that "PIVOTAL software" is not confusingly similar to the Complainantís registered mark "PIVOTAL". The Panel disagrees with the Respondent on a number of grounds.
Firstly, as the trademark "PIVOTAL" was registered mainly in association with wares and services in the field of software, any inclusion of the term "software" would have had to be purely descriptive and would have had to be disclaimed in the Complainantís trademark registration. Therefore, not including the term "software" as part of the trademark under the circumstances if of common sense. Therefore, it is the Panelís opinion that under such circumstances the registration of the trademark "PIVOTAL" is the appropriate one, and the absence of a registration of "PIVOTAL software" is not essential nor useful to the issue of this case.
The Panel is of the opinion that the Complainant has provided sufficient evidence to support a finding that the registered mark "PIVOTAL" is distinctive of the products and services provided by the Complainant. This, not withstanding the fact that the Complainant has only been using the mark "PIVOTAL" in association with its business for a moderate period of time (approximately five years, although in the software industry it could be argued that this amounts to a considerable amount of time). This finding is also supported by the Complainantís registration of the trademark "PIVOTAL" in relation to software in Canada, the United States, United Kingdom and Europe.
Note that in this regard, the Panel is of the opinion that, on balance, the likely use for the Domain Name (and therefore the primary source of any inherent value the Domain Name may have) would be in conjunction with a business which engages in activities similar to that of the Complainant. Therefore, there would be a real possibility of confusion if the Respondent were to consider selling the Domain Name to a third party. The Panel does not rely exclusively on this point, however, in reaching its decision.
Thirdly, the Panel is the opinion that a derivative domain name constructed of a registered trademark and another term can be confusingly similar for the purposes of paragraph 4(a)(i) of the ICANN Policy and will be found to be so where the derivative name consists of a registered trademark and a second term which indicates the business for which the trademark was registered (note that if the secondary term in a derivative domain name indicates a business which is different from that for which the trademark was registered, then that could lead to a different conclusion, except in the case of famous marks where the secondary term is of lesser importance).
There is some authority to support the Panelís finding in this regard (although the Panel is perfectly aware that it is not bound by any other decisions). In Caterpillar Inc. v. Matthew Quinn, Case No. D2000-0314, the domain names caterpillarspares.com and caterpillarparts.com were found to be confusingly similar with the registered mark "caterpillar". The panel based its decision partly on the finding that "caterpillar" was the distinctive component in both domain names. Similarly, in the decision of Caterpillar Inc. v. Roam the Planet Ltd., Case No. D2000-0275, the panel found that as the Complainants registered trademark "cat" had been used extensively in combination with the marketing and advertising of the Complainants heavy machinery, the derivative domain name Ďcatmachines.com" was confusingly similar to the registered trademark of the Complainant.
The Panel agrees with the principles discussed in the above decisions and finds that the derivative domain name formed through the combination of the word "PIVOTAL" with "software" is confusingly similar to the registered mark of the Complainant. It should also be noted that in this regard, the test for the Complainant is not to prove actual confusion but rather that the possibility or likelihood of confusion exists.
Therefore the Panel is of the opinion that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
Although the Complainant maintains that it has an unregistered mark in "PIVOTAL software", the Panel is of the opinion that the determination of the ownership of this unregistered mark is not necessary to resolve the present matter as explained above. The mark "PIVOTAL" was registered in relation to software, hence the Domain Name as a derivative formed by the trademark "PIVOTAL" and its wares and services for which was registered ("software") is deemed related to the registered trademark.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
The Panel is of the opinion that the Respondent has failed to establish a legitimate right or interest under paragraph 4(c)(ii) and (iii) in that there is no evidence to support a finding that the Respondent is commonly known by the Domain Name nor is there any evidence that the Respondent has a legitimate non-commercial or fair use of the Domain Name. Additionally, the Panel finds that that: the Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark from the Complainant who has prior rights in that trademark which preceded Respondentís registration of the Domain Name; and lastly the Respondent is not (either as an individual, business or other organization) commonly known by the name "PIVOTAL software".
The Panel is also of the opinion that the Respondent has failed to establish a legitimate right or interest under paragraph 4(c)(i), i.e. that the Respondent has failed to demonstrate the existence of the use of, or preparation to use, the Domain Name in connection with a bona fide offering of goods or services.
In its decision of Sociťtť des Hotels Meridien SA v. United States of Moronica, Case No. D-2000-0405, this Panel examined grounds of other panels in relation to what constitutes a bona fide offering of services for the purposes of paragraph 4(c)(i). These grounds provided some useful metes and bounds for assessing the bona fides of the intended use of a domain name by a registrant. On one hand, the offering of a generic domain name solely for sale could in principle be considered in itself a bona fide offering of goods of services for the purposes of paragraph 4(c)(i) (see Allocation Network G.m.b.H. v. Steve Gregory, Case D2000-0016). On the other hand, the mere speculative idea for a bona fide business application of a generic domain name does not fall within paragraph 4(c)(i). Furthermore, the mere speculation in generic domain names without showing any demonstrable evidence of plans for a bona fide use is not sufficient to prove legitimate interest in a domain name. (see LIBRO AG v. NA Global Link Limited, Case D2000-0186). The Panel is of the opinion that these comments apply equally well to the case at hand.
Furthermore, the uncontradicted evidence that the Respondent registered a number of domain names including the Domain Name tends to support a finding that the Respondent had no legitimate right or interest.
It is noteworthy that at the present time the Domain Name serves as the terminating address for a website which is "under construction", a standard placeholder for unused domain names.
The Respondent has attempted to defend his legitimate right and interest in the Domain Name by arguing that (i) the Domain Name was acquired in good faith through proper legal channels, (ii) the Domain Name was registered for an as of yet unspecified future use, (iii) the reason the Domain Name has not been used yet is due largely to the actions of the Complainant, and (iv) the Complainant has failed to show that the Respondent had no legitimate right or interest.
The Panel is of the opinion that the mere acquisition of the Domain Name through proper legal channels is not in and of itself adequate for awarding the Respondent a legitimate interest or right in the Domain Name. If this was the case, then mediation and arbitration procedure as provided for by ICANN would be essentially of no use.
Regarding the registration of the Domain Name for an unspecified future use, this is obviously inadequate for even supporting a finding of legitimate right or interest given the clear and unequivocal wording of paragraph 4(c)(i) of the ICANN Policy. The Panel is of the opinion, therefore, that by maintaining that the Domain Name was for a future unspecified use, the Respondent adds no weight to the argument put forward by the Respondent.
The Panel is of a similar mind regarding the Respondentís statement to the effect that the reason that the Domain Name had not yet been used was due to the action of the Complainant. The ICANN Policy in this regard is fairly clear (again, see paragraph 4(c)(i) of the ICANN Policy) and it is up to the Respondent to show bona fide use or preparation for use of the Domain Name prior to any notice of the dispute. The Respondent therefore cannot rely on the Complainantís notification of legal action as grounds for not using or preparing to use the Domain Name, as what occurs after notice is not relevant to the dispute.
The Panel also agrees in principle with the direction taken in Educational Testing Service v. Netkorea, Co., Case No. D2000-0087, where it was found that the burden placed on the Complainant in proving a lack of legitimate right or interest is, of necessity, a light one. However, the Panel would like to go further and say that although there may not be a reversal of burden of proof as such, the failure by the Respondent to adequately address this, once alleged, is a factor which the Panel may take into consideration when judging the existence of a legitimate right or interest. This finding is supported by the various means which are available to a respondent under the ICANN Policy to show legitimate right or interest. The Panel would also like to state that in its opinion the burden placed on a respondent for adequately supporting a finding of the existence on behalf of the respondent of a legitimate right or interest is only one on a balance of probabilities.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy the Complainant is required to prove on the balance that the Respondent has registered and is using the Domain Name in bad faith.
The Panel accepts in part, but only for reasons explained hereafter, the Complainantís contention at paragraph 8 of the Reply that the Respondent did in fact register a number of names (which registration appears to have been removed towards the end of 1999). The Complainant presented evidence in the form of a printout from a Whois database which clearly indicates that the Respondent had already registered 17 domain names by October, 1999. The Respondent failed to provide any evidence, apart from his own denials, that he had in fact not registered or was at anytime owner of the listed domain names. The Panel is of the opinion that it would have been simple for the Respondent to provide a history of the ownership and registration of the listed domain names to rebut the accusations of the Complainant, but having failed to do so, the Respondentís denials are of no consequence. [Furthermore, the Panel conducted some research proprio motu which revealed that a number of the domain names listed in Annex F to the Complaint have been reregistered by other parties, all within early 2000, which tends to indicate that they became available shortly prior to this time]. The Panel is therefore of the opinion that on the balance of probabilities the Respondent had likely registered all the domain names in question and that his repeated denials and failure to address adequately this point serve only to damage his overall credibility.
On one hand the Panel disagrees with the Complainant that the Respondentís lack of response to the Complainantís offer to pay the Respondentís is evidence per se of bad faith registration and use. Paragraph 4(b)(i) of the ICANN Policy provides a bound in this regard, requiring an offer to sell, rent or otherwise transfer the Domain Name, and the refusal to transfer a potentially confusing Domain Name cannot be equated with evidence of bad faith. In any case, it is difficult to determine what the Complainantís offer of "transfer costs" actually amounts to. In this regard it would have been more appropriate under the circumstances, had the Complainant used the term "documented out of pocket expenses directly related to the domain name" as favoured by the ICANN Policy.
On the other hand, the Panel is of the opinion that the Respondentís offer to transfer solely given a "commercial resolution" would have ultimately been for an amount in excess of documented out of pocket expenses related to the registration of the Domain Name. Although this Panel in the decision of Societe des Hotels Meridien v. United States of Moronica, Case No. D2000-0405, found that the sale of or offering for sale a registered domain name beyond out of pocket expenses would not in itself constitute bad faith for the purposes of paragraph 4(b) ICANN Policy, the Panel is of the opinion that, when combined with lack of credibility of the Respondent, it provides support for a finding of bad faith for registration and use.
However as already mentioned, on balance, the Panel accepts the contentions of the Complainant that the Respondent was aware of the Complainant at the time of registration of the Domain Name and that Respondent registered the Domain Name notwithstanding his knowledge of the Complainant. This is based partly on the finding that both the Parties reside in Vancouver, B.C., Canada. This provides additional support for a finding that the Respondent was acting in bad faith at the time of registration.
The Panel is also of the opinion that the Domain Name is obviously connected with the Complainant, its products and services. Therefore, the Panel finds that its use by someone with no connection with the Complainant supports a finding of opportunistic bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondťe en 1772 v. The Polygenix Group Co., Case No. D2000-0163).
As a result, the Panel is of the opinion that the Complainant has proved on the balance that the Respondent has registered and is using the Domain Name in bad faith.
For the foregoing reasons, the Panel concludes that:
Accordingly, the Panel finds that the complaint should be allowed and the Domain Name "PIVOTALsoftware.com" be transferred to the Complainant and so directs Network Solutions, Inc., to do so forthwith.
Jacques A. Lťger, Q.C.
Dated: August 14th, 2000