Pioneerhybrid.com

The timeline behind pioneerhybrid.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc. Claim Number: FA0503000444468 PARTIES 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. 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. Louis E. Condon as Panelist. PROCEDURAL HISTORY 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS 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. FINDINGS 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. 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 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. Identical and/or Confusingly Similar 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. Rights or Legitimate Interests 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. Registration and Use in Bad Faith 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. DECISION 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 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.