DECISION

Pioneer Hi-Bred International Inc. v. Henry Chan

Claim Number:  FA0304000154119

PARTIES

Complainant is Pioneer Hi-Bred International Inc., Des Moines, IA, USA (“Complainant”) represented by Mark Sommers, of Finnegan Henderson Farabow Garrett & Dunner L.L.P.. Respondent is Henry Chan, Hong Kong, HK (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pioneerseed.com>, registered with Iholdings.

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.

            James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 8, 2003; the Forum received a hard copy of the Complaint on April 9, 2003.

On April 8, 2003, Iholdings confirmed by e-mail to the Forum that the domain name <pioneerseed.com> is registered with Iholdings and that Respondent is the current registrant of the name. Iholdings has verified that Respondent is bound by the Iholdings 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 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 29, 2003 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@pioneerseed.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 Forum transmitted to the parties a Notification of Respondent Default.

On May 6, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <pioneerseed.com> domain name is confusingly similar to Complainant’s PIONEER mark.

2. Respondent does not have any rights or legitimate interests in the <pioneerseed.com> domain name.

3. Respondent registered and used the <pioneerseed.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 agriculture industry. Complainant is the largest agricultural seed company in the world, and is a pioneer in the field of plant genetics. Complainant produces, markets and sells agricultural seed in nearly seventy countries worldwide. Complainant offers its product through a variety of channels, including wholly-owned subsidiaries, joint ventures, sales representatives and independent dealers.

Complainant is the owner of numerous trademark registrations for the PIONEER mark, including U.S. Patent and Trademark Office (“USPTO”) Reg. No. 84,443 registered on December 12, 1911. Complainant’s registration is listed on the Principal Register of the USPTO.

Complainant has extensively marketed and promoted its PIONEER mark internationally in a variety of ways, including agricultural trade publications, television and national and international media. Complainant’s website, which receives an average of 10 to15 million “hits” per month, is located at <pioneer.com>. Complainant’s sales of the PIONEER brand seed have amounted to over a billion dollars annually since 1991. In 2001 alone, Complainant’s total worldwide sales of products sold under the PIONEER mark reached nearly 2 billion.

Based on the acquired distinctiveness of Complainant’s PIONEER mark, the duration and extent of Complainant’s advertising and publicity featuring the mark, the geographic area in which Complainant has used its name and mark, and the degree of recognition that the PIONEER mark has achieved in the agricultural trade, Complainant’s PIONEER mark is famous and well-known. Complainant’s value and goodwill in the PIONEER mark is significant, as it allows Complainant to exclusively identify its brand and agricultural seed.

Respondent, Henry Chan, registered <pioneerseed.com> on February 14, 2003. Complainant’s investigation of Respondent reveals that the subject domain name resolves to a website offering Internet search services, including many searches related to agricultural seed. Respondent’s website also uses “pop-up” advertisements. Although Respondent’s <pioneerseed.com> domain name appears in the line of the Internet browser, the domain name shown on the website printout is <domainsponsor.com>, which is the originating URL for Respondent’s website. Complainant’s research indicates that DomainSponsor.com is a company that pays commissions to domain name registrants for revenues generated from searches and pop-up advertisements.

Complainant’s investigation of Respondent indicates that Respondent has registered at least seventy-two other trademark-related domain names. Specifically, Respondent is listed as the registrant of domain names that incorporate the following famous marks: YAHOO!, SBC, GEOCITIES, GREYHOUND, HOTJOBS, SCOOBY-DOO, SCHOLASTIC and YAHOOLIGANS.

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 has established rights in the PIONEER mark through registration and subsequent continuous use of its mark in commerce. See The Men’s Wearhouse, Inc. v. Brian 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”).

Respondent’s <pioneerseed.com> domain name is confusingly similar to Complainant’s PIONEER mark. As stated, Complainant’s PIONEER mark denotes its agricultural brand products, most notably, seed. Therefore, Respondent’s domain name not only incorporates Complainant’s famous mark in its entirety, but also adds the word “seed” to the second-level domain, a word of particular significance to Complainant because it describes Complainant’s product. Respondent’s domain name is rendered confusingly similar under Policy ¶ 4(a)(i) because it combines Complainant’s mark with a term that has an obvious relationship to Complainant’s business. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”).

Additionally, top-level domains, such as “.com,” are inconsequential when determining if a domain name is confusingly similar to a mark under the Policy. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not respond to Complainant’s submission, thereby failing to fulfill its burden of demonstrating rights or legitimate interests in the subject domain name. Respondent’s failure to submit a Response allows all reasonable inferences made by Complainant to be regarded as true, unless clearly contradicted by the evidence. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Moreover, Respondent’s failure to submit evidence of circumstances that may support a finding of rights or legitimate interests in the disputed domain name corroborates Complainant’s assertions that Respondent has none. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

Uncontested evidence indicates that Respondent uses Complainant’s famous PIONEER mark in the domain name to attract Internet users to its website, which is located at <domainsponsor.com>. As stated, Complainant’s research indicates that DomainSponsor.com is a company that pays commissions to domain name registrants for revenues generated from searches and pop-up advertisements. Respondent’s unauthorized use of Complainant’s mark in its domain name in order to accumulate commissions from DomainSponsor.com fails to constitute a legitimate use of the <pioneerseed.com> domain name. Thus, Respondent is not using the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

There is no evidence before the Panel that would suggest Respondent is commonly known by the domain name, or the “pioneerseed” second-level domain. Respondent’s WHOIS information records Respondent as “Henry Chan.” Further, circumstances indicate that Respondent habitually registers famous marks in domain names in lieu of any authorization or license from the primary trademark holder. Therefore, the Panel concludes that Respondent fails to establish rights in the domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s registration and use of the disputed domain name meet the bad faith circumstances enunciated under Policy ¶ 4(b)(iv). Specifically, the <pioneerseed.com> domain name infringes on Complainant’s rights in the PIONEER mark, as Respondent attempts to commercially benefit from Complainant’s goodwill and to usurp Internet traffic intended for Complainant. Respondent uses the infringing domain name to intentionally attract Internet users to its website, for commercial gain, by making unauthorized use of Complainant’s famous PIONEER mark. Evidence indicates that Respondent receives compensation in the form of commissions from an entity known as DomainSponsor.com. Therefore, Respondent’s actions satisfy the bad faith requirements of Policy ¶ 4(a)(iii). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the website without permission from Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <pioneerseed.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  May 12, 2003

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