START-UP TRADEMARK OPPOSITION POLICY

DECISION

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.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pioneer.biz>, registered with Melbourne IT d/b/a Internet Names World Wide.

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.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

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.

FINDINGS

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.

DISCUSSION

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’s Rights in the Mark

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.

Respondent’s Rights or Legitimate Interests

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 (4^th 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 (7^th 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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