Pioneer v. Pioneer Construction Materials
Claim Number: FA0208000117865
PARTIES
Complainant
is Pioneer, Long Beach, CA, USA
(“Complainant”) represented by Robert J.
Skousen, of Skousen & Skousen. Respondent is Pioneer Construction Materials, Doncaster, VIC, AUSTRALIA
(“Respondent”) represented by Lisa Ritson,
of Blake Dawson Waldron.
The
domain name at issue is <pioneer.biz>,
registered with Melbourne IT d/b/a Internet Names World Wide.
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.
Bruce
E. Meyerson 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 August 2, 2002; the Forum
received a hard copy of the Complaint on August 5, 2002.
On
August 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 29,
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 August 28, 2002.
Complainant’s
additional submissions were received on September 2, 2002. Respondent’s additional submissions were
received on September 6, 2002.
On September 13, 2002, pursuant to STOP Rule 6(b), the
Forum appointed Bruce E. Meyerson
as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
Complainant,
Pioneer, is a worldwide manufacturer of consumer electronics. It contends that its PIONEER trademark has
been in use in commerce since 1957 and that more than 400 products are sold
under this trademark. Complainant
asserts that it has 12 registered trademarks in the United States incorporating
the mark PIONEER as a “stand-alone” trademark.
It also claims to hold marks for PIONEER in many other countries around
the world, including Australia.
Complainant contends that the disputed domain name is confusingly
similar to “Pioneer’s family of registered trademarks because it incorporates
the entirety of Pioneer’s mark.”
Complainant contends that Respondent has not demonstrated a legitimate
interest in the domain name. First,
Complainant states that Respondent cannot be considered to be the “beneficial
owner” of marks using the word “Pioneer” when they are owned by companies that
are merely affiliated with Respondent.
Second, Complainant contends that Respondent has not, prior to notice of
the dispute, made demonstrable preparations for the use of the domain
name. Third, according to Complainant,
Respondent is not commonly known by the domain name. Finally, Complainant contends that Respondent acted in bad faith
because of the manner in which Respondent and its affiliated companies filed
multiple applications to obtain the disputed domain name.
B. Respondent
Respondent,
Pioneer Construction Materials Pty Ltd., is an Australian subsidiary of the UK
based Hanson plc group of companies.
Pioneer International Limited (now known as Hanson Australia Pty Ltd)
owns 67% of Pioneer Construction and the remaining 33% is owned by Pioneer
Gravels (Qld) Pty Ltd., which in turn is owned by Pioneer International Limited
(“PIL”). Respondent contends that it is
“beneficially entitled to use of the PIONEER name and registrations through its
corporate relationship with the trademark owner PIL.” Respondent contends that the record demonstrates that it was
preparing to use the disputed domain name prior to the notice of this
dispute. Furthermore, Respondent
contends that it is, in fact, commonly known by the PIONEER name.
PIL holds nine Australian trademarks
for the PIONEER mark and nine other trademark registrations throughout Asia,
also for the PIONEER mark. PIL,
directly or indirectly, owns all of the shares of Pioneer Construction. Under these circumstances Pioneer
Construction is a beneficiary of the marks owned by PIL within the meaning of
the STOP Policy.
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 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.
Complainant
has demonstrated that the disputed domain name is identical to a mark in which
it has “rights.”
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Next, Complainant must prove that
Respondent has no rights or legitimate interests with respect to the domain
name. Under STOP Policy paragraph 4(c), a respondent may demonstrate rights or
interests by providing that respondent is the owner or beneficiary of a trade
or service mark that is identical to the domain name; that before any notice of
the dispute, respondent used or made demonstrable preparations to use the
domain name in connection with a bona fide offering of goods or services, or
that respondent has been commonly known by the domain name. If Respondent prevails on any aspect of STOP
Policy paragraph 4(c), then the relief sought by the Complaint must be denied.
Respondent contends that is the
beneficial owner of the Pioneer name and registrations through its corporate
relationship with the trademark owner PIL.
Complainant contends that traditional trademark law does not support the
argument that Pioneer Construction should be allowed to benefit from the
trademark registrations of affiliated companies. Because of the unique language of STOP Policy ¶ 4(c)(i),
Respondent’s position is correct.
PIL holds nine Australian trademarks for
the PIONEER mark and nine other trademark registrations throughout Asia, also
for the PIONEER mark. PIL, directly or
indirectly, owns all of the shares of Respondent. Respondent asserts that it is the beneficial owner of the PIONEER
mark. Under the STOP Policy, such
assertion, absent proof to contrary, is sufficient to establish that Respondent
is the beneficiary of the mark within the meaning of STOP Policy ¶ 4(c)(i).
The concept of beneficial use is not set
forth in the UDRP and therefore its inclusion in the STOP Policy must
necessarily mean there is a different meaning given to the comparable
provision, UDRP Policy ¶ 4(a)(ii).
Thus, the cases relied upon by Complainant are not persuasive. The Panel finds that the intent of the STOP
Policy is to permit a showing of “legitimate rights” by a subsidiary company
such as Respondent.
First, ordinarily the ownership of marks
as between a parent and a subsidiary is a matter to be decided by the parties
themselves. See J. McCarthy, McCarthy on
Trademarks and Unfair Competition § 16:37 (4th ed.). Second, when a party has beneficial
ownership of something, the party ordinarily has the right to use that property
even though another party may have legal ownership or title to the property or
asset. Black’s Law Dictionary
1540 (7th ed.). Therefore,
if as between PIL and Respondent, they have agreed that the latter shall be a
beneficiary of the PIONEER mark, then such understanding establishes sufficient
beneficial interest within the meaning of the STOP Policy.
Accordingly, the Panel finds that STOP
Policy ¶ 4(a)(ii) has not been satisfied.
DECISION
The relief sought by
Complainant is DENIED.
Bruce E. Meyerson, Panelist
Dated: October 8, 2002
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