Pioneer Hi-Bred International, Inc. v.
Manila Industries, Inc.
Claim
Number: FA0503000444468
Complainant is Pioneer Hi-Bred International, Inc. (“Complainant”),
represented by Mark Sommers, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 901 New York Avenue NW, Washington,
DC 20001. Respondent is Manila Industries, Inc. (“Respondent”),
3522 2nd Floor, Rm 2 AL 11 B, Lard Prao Road, Klongchan Bangkapi, Bangkok
10240.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <pioneerhybrid.com>, registered with Compana,
Llc.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 22, 2005.
On
April 8, 2005, Compana, Llc confirmed by e-mail to the National Arbitration
Forum that the domain name <pioneerhybrid.com> is registered with Compana,
Llc and that Respondent is the current registrant of the name. Compana, Llc has verified that Respondent is
bound by the Compana, Llc 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
April 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 28, 2005 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@pioneerhybrid.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 3, 2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Louis E. Condon
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pioneerhybrid.com>
domain name is confusingly similar to Complainant’s PIONEER and HI BRED marks.
2. Respondent does not have any rights or
legitimate interests in the <pioneerhybrid.com> domain name.
3. Respondent registered and used the <pioneerhybrid.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Pioneer Hi-Bred International, Inc., is a global leader in the agricultural
industry and the largest provider of agricultural seed in the world. Complainant holds several trademark
registrations with the United States Patent and Trademark Office for the
PIONEER mark (Reg. No. 84,443 issued December 12, 1911; Reg. No. 726,844 issued
January 30, 1962; Reg. No. 770,971 issued June 9, 1964; and Reg. No. 778,911
issued October 27, 1964) for various agricultural seed and related goods and
services for numerous countries throughout the world. Complainant also holds a trademark registration in Thailand for
the HI-BRED mark (Reg. No. 84,775 issued March 16, 1983).
Respondent
registered the disputed domain name on December 27, 2004. Respondent is using the disputed domain name
to redirect Internet users to a pay-per-click website advertising sponsored
links for numerous categories of products and services, such as computers,
finance, health, automobiles, and travel.
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 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 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) 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.
Complainant
established by extrinsic proof in this proceeding that Complainant has rights
in the PIONEER mark as a result of its registration with the United States
Patent and Trademark Office and in the HI-BRED mark as a result of its
registration in Thailand and by continuous use in commerce. See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that the registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive. The
respondent has the burden of refuting this assumption); see also Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the complainant
to register all possible domain names that surround its substantive mark does
not hinder the complainant’s rights in the mark because “[t]rademark owners are
not required to create ‘libraries’ of domain names in order to protect
themselves”).
The <pioneerhybrid.com>
domain name is confusingly similar to Complainant’s PIONEER mark because the
domain name incorporates Complainant’s mark in its entirety, merely adding the
generic or descriptive term “hybrid,” which describes Complainant’s
business. The addition of a generic or
descriptive word to Complainant’s mark does not negate the confusingly similar
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Pfizer, Inc. v. Suger, D2002-0187
(WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates
the VIAGRA mark in its entirety, and deviates only by the addition of the word
“bomb,” the domain name is rendered confusingly similar to the complainant’s
mark); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business); see also
Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum
Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is
confusingly similar to the complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which the
complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity).
Additionally,
Respondent’s domain name is confusingly similar to Complainant’s PIONEER and
HI-BRED marks because the domain name combines Complainant’s marks, misspells
Complainant’s HI-BRED mark, and replaces the mark with the phonetically similar
term “hybrid.” See
Nintendo of Am. Inc. v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the
respondent combined the complainant’s POKEMON and PIKACHU marks to form the
<pokemonpikachu.com> domain name); see also G.D. Searle &
Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding
that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the
capacity of the disputed domain name to confuse Internet users, but actually
“adds to the potential to confuse”); see also VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000)
(finding that the pronunciation and spelling between the domain name
<venesign.com> and the complainant’s mark, VERISIGN, are so close that
confusion can arise in the mind of the consumer); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO
Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly
similar to the complainant’s YAHOO mark).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to negate the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) ("the addition of the generic top-level domain (gTLD) name ‘.com’ is
. . . without legal significance since use of a gTLD is required of domain name
registrants"); see also Blue Sky Software Corp. v. Digital Sierra,
Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to the complainant’s registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences in favor of a complainant and accept the complainant’s
allegations as true).
Once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden
shifts to Respondent to show that it does have rights or legitimate
interests. The Panel construes
Respondent’s failure to respond as an admission that Respondent lacks rights
and legitimate interests in the <pioneerhybrid.com> domain
name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding that where the complainant has asserted that the
respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on the respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant
asserts that the respondent has no rights or legitimate interests with respect
to the domain, the burden shifts to the respondent to provide credible evidence
that substantiates its claim of rights and legitimate interests in the domain
name); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that, by not submitting a response, the respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the <pioneerhybrid.com>
domain name. Moreover, Respondent is
not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the
domain names pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding no rights or legitimate interests where (1) the respondent is
not a licensee of the complainant; (2) the complainant’s prior rights in the
domain name precede the respondent’s registration; (3) the respondent is not
commonly known by the domain name in question).
Additionally, the
<pioneerhybrid.com> domain name is confusingly similar to
Complainant’s PIONEER and HI-BRED marks and is used to redirect Internet users
to a website advertising links for a wide variety of third-party services and
products. The Panel finds that Respondent’s
use of the domain name that is identical to Complainant’s mark to divert
Internet users to a website that links to third-party websites is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that the respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to the complainant
and presumably with the purpose of earning a commission or pay-per-click
referral fee did not evidence rights or legitimate interests in the domain
name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that incorporates Complainant’s PIONEER
and HI-BRED marks for Respondent’s commercial gain. Respondent registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because Respondent intentionally attempted
to attract potential customers from Complainant to Respondent’s website by
taking advantage of Internet users who are searching under Complainant’s
PIONEER and HI-BRED marks and diverting them to Respondent’s commercial
website. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with the complainant’s mark and offering the same services as the
complainant via his website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where the respondent attracted users to a website
sponsored by the respondent and created confusion with the complainant’s mark
as to the source, sponsorship, or affiliation of that website).
Additionally,
Respondent registered the disputed domain names with actual or constructive
knowledge of Complainant’s rights in the PIONEER and HI-BRED marks due to
Complainant’s registration of the marks with the United States Patent and
Trademark Office and Thailand trademark authorities and use of the marks in
commerce. Registration of a domain name
that is confusingly similar to a mark, despite actual or constructive knowledge
of another’s rights in the mark, is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <pioneerhybrid.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
May 7, 2005
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