and Mediation Center
and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pioneer Hi-Bred International, Inc. v. Ingescom and Samuel Duran
Case No. D2001-0202
1. The Parties
The Complainant is Pioneer Hi-Bred International, Inc., a corporation of the United States with its principal place of business at 400 Locust Street, Suite 800, Des Moines, Iowa 50306.
The Respondents are Ingescom and Samuel Duran of Les terrasses du golf, No 5 Bât B, 15 Allée Arago, 33200 Bordeaux, France ("the Respondent").
2. The Domain Name and Registrar
The domain name, which is the subject of the Complaint, is <wwwpioneer.com> registered on May 6, 2000.
The Registrar of the domain name is Gestion et Attribution des Noms de Domaine sur Internet ("GANDI").
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a Complaint which was received by the WIPO Arbitration and Mediation Center ("the Center") via e-mail on February 7, 2001, and in hard copy on February 12, 2001. The Complainant elected to have the dispute decided by a single member Administrative Panel.
(b) The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy of WIPO ("the Supplemental Rules") as required by Paragraph 4(a) of the Rules and Paragraph 5 of the Supplemental Rules. Payment in the required amount to the Center has been made by the Complainant.
(c) On February 15, 2001, the Center transmitted by e-mail to GANDI a Request for Registrar Verification in connection with the Complaint. On February 22, 2001, GANDI transmitted to the Center via e-mail, Response from Registrar confirming that the registrant is Samuel Duran of Les terrasses du golf, 15 Allee Arago, No 5, Bat B, 33200, Bordeaux, France.
(d) On February 23, 2001, the Center transmitted the Notification of Complaint to the Respondent in accordance with the details provided by GANDI. The Center advised that the Response was due by March 14, 2001. On the same day, the Center transmitted by mail copies of the foregoing documents to the Respondent.
(e) A Response was received from the Respondent by e-mail by the Center on March 13, 2001. On March 13, 2001, an Acknowledgment of Respondent's Response was sent to the Respondent by e-mail.
(f) The Complainant filed a reply to the Respondent's Response dated March 20, 2001.
(g) Having received a Statement of Acceptance and Declaration of Impartiality from the Panelist, the Center transmitted to the parties a Notification of Appointment of Administrative Panel on April 2, 2001. The Projected Decision was April 16, 2001. The Panelist sought an extension in accordance with Paragraph 15(b) of the Rules.
(h) The Panelist's decision is based upon the Complaint, the Response, the Reply, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is Pioneer Hi-Bred International, Inc. The Complainant is the largest agricultural seed company in the world and a leader in the field of plant genetics. The Complainant was incorporated in the United States in the mid 1920s. It produces, markets and sells agricultural seeds in nearly 70 countries worldwide including the United States and France. The Complainant's products are sold by a variety of organizations, including wholly owned subsidiaries, joint ventures, sales representatives and independent dealers, and via the Internet.
The Complainant is also a world leader in research and development of agricultural seeds for the international marketplace. More than 101 primary research locations are operated worldwide, including in the United States and France. Products are tested at thousands of other locations.
The Complainant, is the owner of numerous trademark registrations for the mark PIONEER and logo formats covering various goods and services in international classes 1, (chemicals), 5 (pharmaceuticals), 31 (natural agricultural products) and 42 (agricultural services). Details of the Complainant's registrations in the United States, France and the European Community are Exhibit 6 to the Complaint. The Complainant is also the owner of numerous other trademark registrations for the mark PIONEER and logo formats in over 150 countries throughout the world. A listing of these registrations is Exhibit 7 to the Complaint.
The Complainant is also the owner of United States Registration No. 2,303,177 for the mark PIONEER.COM issued on December 28, 1999, covering services in international class 42 (online services).
The Complainant also owns the domain name <pioneer.com> which was registered with NSI on February 2, 1996, and has been used by the Complainant since on or about that date.
Sales of PIONEER branded products have amounted to over a billion dollars annually for nearly a decade. In 2000, total worldwide retail sales of products sold under PIONEER marks nearly reached US$2 billion.
The Complainant has extensively marketed and promoted the PIONEER marks and PIONEER.COM mark and domain name worldwide through agricultural trade publications, on television and in national and international print media. The Complainant's website is located at the URL <www.pioneer.com>. Over the six months preceding the date of the Complaint, the Complainant's website had received an average of 10 to 15 million hits per month.
According to the WHIOS database, the Respondent's domain name <www.pioneer.com> was registered on May 6, 2000. The Complainant's lawyers sent the Respondent a cease and desist letter dated October 26, 2000. At this stage, the domain name did not link to an active site. That letter read in part;
"As you are no doubt aware, our client owns the domain name 'www.pioneer.com.' The PIONEER name has long been used by our client for agricultural products. It is one of the leading names in the agricultural community. The PIONEER mark is the subject of numerous incontestable trademark registrations in the United States and throughout the world, including the trademark PIONEER.COM for providing advice, counseling, and information on the subject of agronomy via a global computer network. The PIONEER mark is an asset of incalculable value to our client and one that our client must zealously protect.
It has recently come to our client's attention that you have registered the domain name 'wwwpioneer.com'. That domain name is confusingly similar to our client's PIONEER mark and name and 'www.pioneer.com.' domain name. The omission of the period after the world wide web protocol ('www') is clearly calculated to divert Internet traffic from Pioneer's website by reason of typographical error."
After referring to the relevant US legislation, the letter concluded with the request for "written assurances by no later than November 10, 2000 that you will transfer the domain name ... to our client". The Respondent's lawyer responded by letter of November 13, 2000. After referring to the request for "restitution of the domain name" the letter continued as follows:
"It would seem to me that legally speaking, such restitution would be difficult while my client remains the owner of the name WWWPIONEER. PIONEER is, I should remind you, a generic term, and the site WWWPIONEER.COM itself corresponds to a computer data site that my client created for his company's purposes.
However, if the assignment of this domain name is crucial to you, I will contact the relevant person at the Ingescom in order to examine the conditions under which it would be agreeable to assign my client's site to you in its entirety, since the site would lack justification without the name PIONEER.
I would appreciate your letting me know your client's position with respect to a possible buyout of the site in dispute."
On October 31, 2000, Samuel Duran filed a trademark application in France in classes 38, 39 and 41 for a mark consisting of the words "WWWPIONEER = World Wide Web Pioneer".
Some time after receiving the Complainant's cease and desist letter (see paragraph 3 of the Complainant's Reply), the Respondent set up its website. A printout of the Respondent's entire website is Exhibit 10 to the Complaint. It is headed "World Wide Web Pioneer WWWPIONEER" and starts "Hello, WARNING! THIS IS NOT THE OFFICIAL SITE OF INTERNATIONAL 'PIONEER.INC.'". A copy of the Respondent's website, framing the Complainant's website, is Exhibit 2 to the Complaint.
On February 15, 2001, Mr. Duran sent the following e-mail to the Complainant's lawyer.
"First, excuse my poor inglish spoken. I just received your letter for the domain name 'www.wwwpioneer.com' .
I quickly read it. I notice the problem about the frame. When you wrote me the first time, as soon as soon as possible, i put the link in the first page to your Pioneer.inc web site. BUT it was only for not making confusion for the people coming to my website. I did it quickly and forgot to link to a "blank" target.
I've just done it a few minutes ago.
As you can see, www.wwwpioneer.com is a website who promotes severals INTERNET NEW technologies that not everybody knows.
That's the only reason why we call our website: Wolrd Wide Web Pioneer (wwwpioneer). It's a short and generic name. And that's why we registered the trademark 'wwwpioneer'.
A copy of the registered trademark 'wwwpioneer' will be sent to ICANN to confirm our rights with this trademark and stop the procedure you tried to run.
Just believe I dont want to attack Pioneer.inc, and I'm ready for listening any of your suggestions to clearly not making confusions with people coming to my website (if you think that).
My Lawer (sic) Maitre DURAN-BLONDEL is on Hollydays for 10 days, that's why I directly right to you. You can EMail me for any question. I work 14 hours a day on Internet, so we can quickly find a good solution for you and me by Email.
Very truly yours.
The Complainant's lawyer, Mr. Sommers, responded to Mr. Duran's e-mail of February 15, 2001, by e-mail of that date requesting return of the domain name but indicating that his client would "reimburse you for the fee of registering the infringing WWWPIONEER.COM domain name".
The material provided to the Panelist, does not show whether there was any reply to Mr. Sommers' e-mail.
The Respondent's Response, being an e-mail to the Center dated March 13, 2001, is as follows:
Sorry, but I don't speek well english, I hope it wont be too hard to talk.
I received a complaint from, few days ago. I couldn’t answer it before, because I was working 500 KM away my home.
The dispute is about the domain name: http://www.wwwpioneer.com/
As you know, 'pioneer' is a generic word.
My job is to create a website (http://www.artiste-peintre.com/, http://www.biohydroshop.com/, http://www.mairie-bordeaux.fr/360salons/mairie.htm(official town council of Bordeaux) etc....). I decided to create a website to talk about the new internet pioneer technologie (sound, picture, language etc...). That's why I simply called it 'WorldWideWebPioneer'. When I received a complaint from Pioneer, inc telling me that my domain name http://www.wwwpioneer.com might create trouble in people mind, I decided to write in my website that there is relation between my site and the Pioneer.inc. I did it for not disturbing Pioneer.inc. In fact, lot of website have the 'pioneer' term in there domain name (just look for 'pioneer' in altavista.com). My website is not 'unfair competion', there is no trouble in my website with pioneer.inc (subject to my website, logo of Name, advertising etc...). To be certain to be in my good rights, I deceided, as allow us our french law, to register the name 'wwwpioneer' in our INPI, in a case that do not disturb the pioneer.inc. So I follow the french law to be in my rights to use the domain name http://www.wwwpioneer.com/.
I send to you the copy of this french registered trademark.
So I say to you: All I want is just to work without disturbing the Pioneer.inc. I'm ready for listening their wiches to be sure there is no doubt (as they think). But I am regular with french law. That's why I answer directly to you, and not my lawer.
Waiting for your answer. Thanks. Samuel Duran
5. Parties' Contentions
The Complainant contends that the Respondent has unlawfully registered the domain name <wwwpioneer.com>. The Complainant asserts that this is a clear case of "typosquatting", namely, the misspelling or omission of a letter or punctuation mark in another's name in order to divert Internet traffic caused by typographical error. The Complainant claims that the Respondent has omitted the period between the "www" protocol and the Complainant's PIONEER.COM trademark and domain name. The Complainant observes that on reaching the Respondent's <wwwpioneer.com> website, a link to the Complainant's website activates an unauthorized frame of the Complainant's website, including the masking of the Complainant's website URL <www.pioneer.com>.
The Complainant also contends that the Respondent does not have any rights or a legitimate interest in the domain name <wwwpioneer.com> by virtue of the fact that first, the Respondent operates no legitimate business under that name, secondly, the <wwwpioneer.com> domain name contains and trades on the goodwill of the Complainant's famous PIONEER marks and PIONEER.COM mark and domain name and unlawfully diverts traffic from the Complainant's <www.pioneer.com> website through typographical error, and, thirdly, that the Respondent's use of the <wwwpioneer.com> domain name and mark is unauthorized.
Lastly, the Complainant contends that the Respondent's actions meet the bad faith criteria outlined in Paragraph 4(b) of the Policy.
The Complainant refers to the Respondent's domain name registration and contends:
"Given the only purpose of registering another's domain name prefaced by the 'WWW' protocol is to divert Internet traffic through typographical error, Respondent clearly had actual knowledge of Pioneer and its WWW.PIONEER.COM website".
Further, the Complainant contends that by registering and using the <wwwpioneer.com> domain name, the Respondent receives diverted Internet users who, in attempting to reach the Complainant's site, mistakenly omit the period when typing the URL <wwwpioneer.com>. Because a user need not necessarily preface a website address with the "www" protocol, users mistakenly omitting the period when typing <wwwpioneer.com> are instantly diverted to the Respondent's site. This cybersquatting technique, is known as "typosquatting".
The Complainant further contends that when Internet users mistakenly access the Respondent's website while looking for the Complainant's website, they first encounter an unsophisticated site and a prominent unauthorized link to the Complainant which, when activated, frames the Complainant's website inside the Respondent's site. The Complainant claims that Internet users mistakenly typing the Respondent's domain name will initially believe they have arrived at the Complainant's own website, or otherwise wrongly believe the Complainant sponsors or endorses the Respondent's website. The Complainant asserts that users not viewing the address line of their browser and failing to note their typographical error before being transferred to the Respondent's website will be confused.
Further, the Complainant contends that the Respondent's unauthorized link to the Complainant's website will not dispel such confusion because disclaimers are not always read or understood. The Complainant states that the posting of the warning is an acknowledgment of the likelihood of confusion caused by the registration of the domain name in issue.
The Complainant relies upon the fact that the website was only posted after receipt of the Complainant's cease and desist letter and characterizes this as a "superficial website disingenuously crafted to provide an alibi for his wrongful registration". The Complainant asserts that the site is void of any meaningful content and that the primary focus of the site is the confusing reference to "International Pioneer.Inc" and an unauthorised link to the Complainant's website.
The Complainant asserts that the Respondent's site feigns to be a site where a user can "find some pioneer technologie about the Internet" and that the supporting "content" are three reference links being Microsoft, Macromedia and uLead Systems. It is noted that the Respondent does not frame these sites but simply provides pass-through links. The Complainant notes that, to the best of the Complainant's information and belief, none of the three referenced companies has authorized the Respondent to provide those links.
The Complainant also notes that the Respondent claims to produce a monthly newsletter about "pioneer technologie about the Internet" but that no newsletter has ever been posted or produced by the Respondent.
The Complainant asserts that the deliberate framing of the Complainant's website tarnishes the Complainant's marks and domain name.
The Complainant contends that the Respondent's use and registration of the domain name <wwwpioneer.com> meets the bad faith element of Paragraph 4 (b) (i) of the Policy because it was registered primarily to sell, rent or otherwise transfer it for valuable consideration in excess of Respondent's documented out-of-pocket expenses. Reference is made to the letter from the Respondent's lawyer suggesting a "buyout" and a number of earlier decisions including General Electric Company v. mr domains (Marcelo Ratafia) (WIPO Case No. D2000-0594) and Novus Credit Services Inc. v. personal (WIPO Case No. D2000-1158) although in the first case the respondent offered the domain name for sale for US $ 500,000 on the day of the registration and in the second case the site in issue included a link to the Respondent's internet gambling site.
The Complainant also contends that the Respondent's omission of a specific price for the domain name does not lessen its bad faith acts and relies on the decision in PNC The Financial Services Group Inc., f/k/a PNC Bank Corp., PNC Bank, N.A., and PNC Brokerage Corp. v Khalil Ahmad (WIPO Case No. D2000-1584). The Complainant relies upon the letter from the Respondent's lawyer noting "the site would lack justification without the name 'PIONEER' "as an acknowledgment that the value of the site stems from the use of the word "PIONEER".
The Complainant asserts that it is inconceivable that the Respondent registered a domain name virtually identical, save for a typographical error, to that of the Complainant by sheer happenstance.
The Complainant asserts that it is well settled that typo squatting constitutes bad faith and refers to the decisions in World Wrestling Federation Entertainment, Inc v. Matthew Bessette (WIPO Case No. D2000-0256), Nokia Corporation v. Private (WIPO Case No. D2000-1271), Microsoft Corporation v. Stoneybrook (WIPO Case No. D2000-1274), Yahoo! Inc v. Data Art, et al (WIPO Case No. D2000-0587), AltaVista Company v. Stoneybrook aka Stonybrook Investments (WIPO Case No. D2000-0886), Peoplepc, Inc v. Eurostar (WIPO Case No. D2000-1129) and Dow Jones & Company, Inc. and Dow Jones, LP v. Powerclick Inc (WIPO Case No. D2000-1259).
The Complainant also asserts that, due to the fame and registration of the Complainant's marks and domain name, that the Respondent had constructive knowledge of the Complainant's rights when it selected and registered the disputed domain name. The Complainant also refers to the use of the domain name to divert Internet users to an improperly framed website, the fame of the marks in issue, the popularity of the Complainant's website and the nature of the Respondent's typographical misspelling of the Complainant's website to assert that there is no question that the Respondent also had actual knowledge of the Complainant's rights when it selected and registered the domain name in issue.
The only evidence submitted on behalf of the Respondent is set out above. In essence, the Respondent contends that "Pioneer" is a generic word, that he decided to create a website to talk about the new Internet pioneer technologies and call it "World Wide Web Pioneer", that he included the link to the Complainant after receipt of complaint from the Complainant to avoid any confusion, that his website clearly disavows any connection with the Complainant and that he has sought to register the trademark referred to above in France. That registration is for services in classes 38 (Agencies for news and information about new Internet technologies), 39 (Distribution of newspapers that deal with Internet technology news as well as with pioneers of new technology associated with the Internet) and 41 (Publishing books and magazines about Internet technology).
6. Discussion and Findings
GANDI has indicated that the Respondent's domain name registration is subject to the Policy.
Paragraph 4.e. of the Policy requires the Complainant to make out three elements:
A. The "domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights".
The domain name in issue is <wwwpioneer.com>.
The Complainant has trademark registrations, predating the Respondent's domain name registration, for the word PIONEER and the domain name PIONEER.COM. Further, the Complainant registered the domain name <www.pioneer.com> with NSI on February 2, 1996. The domain name in issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Respondent's link to the Complainant's website may be an acknowledgment of that confusion although it may simply be an attempt to avoid a dispute with the Complainant.
B. The Respondent
"has no rights or legitimate interests in respect of the domain name".
If the Panelist finds any of the matters set out in Paragraph 4.c. of the Policy to be proved, based on the evaluation of all the evidence, that is said to demonstrate the Respondent's rights or legitimate interests to the domain name. There is no evidence, before any notice to the Respondent of the dispute, of any use of, or demonstrable preparations to use, the domain name or a domain name corresponding to the domain name in connection with a bona fide offering of goods or services in terms of Paragraph 4.c.(i) of the Policy. The Respondent's trademark application and establishment of a site under the domain name post date receipt of the cease and desist letter from the Complainant's lawyers and occurred over five months after registration.
Further, there is no evidence that the Respondent has been commonly known by the domain name, even though it acquired no trademark or service mark rights in terms of Paragraph 4.c.(ii) of the Policy.
Lastly, there is no evidence that the Respondent is making a legitimate non-commercial use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark in issue in terms of Paragraph 4.c.(iii) of the Policy. The evidence adduced by the Respondent post dates the Complaint and is unsupported by material such as the monthly newsletter claimed to be produced.
There is no other evidence suggesting that the Respondent has rights or legitimate interests in respect of the domain name. Although "pioneer" is a generic word, the evidence advanced about its use relates to the period after the Complaint and is unhelpful on that basis.
C. The "domain name has been registered and is being used in bad faith".
If the Panelist finds evidence of any of the matters set out in Paragraph 4.b of the Policy that shall be evidence of registration and use of a domain name in bad faith.
From the circumstances recited above, it seems probable that the domain name is likely to have been registered primarily for the purpose of selling it to the Complainant who is the owner of the trademark or service mark for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Reliance may be placed on the omission of the period from the Complainant's domain name, the "buyout" suggested by the Respondent's lawyer and the apparent absence of a response to the Complainant's offer to reimburse the Respondent the registration fees if the name is transferred.
As such, bad faith appears to be made out under Paragraph 4.a.(iii) in reliance on Paragraph 4.b.(i) at least.
Accordingly, the Panelist finds that the Respondent registered the domain name <wwwpioneer.com> which is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith in accordance with Paragraph 4.a. of the Policy. In accordance with that finding, the Panelist orders that the domain name <wwwpioneer.com> be transferred to the Complainant.
Dated: May 22, 2001