WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pioneer Hi-Bred International Inc v. Mami

Case No. D2002-0761

 

1. The Parties

The Complainant is Pioneer Hi-Bred International Inc ("Pioneer Hi-Bred"). It is an agricultural company specialising in seed production and plant genetics. It is a US corporation with a principal place of business at Iowa, United States of America.

It is represented in the proceeding by its counsel, Mark Sommers of Finnegan, Henderson, Farabow, Garrett and Dunner, LLP, of Washington, DC, United States of America.

The Respondent is identified solely as Mami ("the Respondent") with an address in Gyeongbook, Korea. It has a technical contact of Domain 1004, Domain 1004.com, care of Webpus Inc., Seoul, Republic of Korea.

 

2. The Domain Name and Registrar

The domain name the subject of the dispute is <pioneerhibred.com>.

The Registrar with which the domain name is registered is Network Solutions Inc.

The date on which the disputed domain name was registered is December 17, 2001.

 

3. Procedural History

On August 14, 2002, the Complaint was received by email.

On August 19, 2002, the Complaint was received in hard copy.

On August 26, 2002, an amended Complaint was received by email.

On August 29, 2002, the amended Complaint was received in hard copy.

On August 15, 2002, Registrar Verification was requested.

On August 16, 2002, the Registrar responded to the verification request.

On August 30, 2002, a Formal Notification of Complaint and Commencement of Administrative Proceeding was notified.

On September 20, 2002, a Notification of Respondent Default was issued.

On October 15, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date was advised.

An administrative panel of John Katz QC of Auckland, New Zealand, as sole Panelist was notified. The Panelist having accepted the appointment and having considered the papers delivers the following administrative panel decision.

 

4. Factual Background

A. Complainant

The Complainant, Pioneer Hi-Bred, is a US corporation with its principal place of business in Des Moines, Iowa, United States. It is an agricultural company being the largest agricultural seed company in the world. It is also involved in plant genetics.

Pioneer Hi-Bred sells its agricultural seeds in nearly 70 countries world-wide including the United States and Korea, the latter place being the place of domicile of the Respondent.

Pioneer Hi-Bred also operates 110 primary research locations worldwide including in the United States and Korea.

Pioneer Hi-Bred was incorporated in 1926 and since 1935 has been known as Pioneer Hi-Bred Inc down to 1970 whereafter it became known as Pioneer Hi-Bred International Inc.

Pioneer Hi-Bred uses and has used the trademark PIONEER HI-BRED for many years in many locations and situations when identifying itself, its business and its products and services. It has sold over US$1 billion of products world-wide annually since 1991 and in 2001 its sales reached nearly US$2 billion.

Pioneer Hi-Bred has a website established since February 1996, "pioneer.com" which site is visited between 10 and 15 million times each month.

Pioneer Hi-Bred has trademark registrations in a number of jurisdictions, some of its US registrations dating from 1911. In South Korea it has registration 103010 PIONEER dated in 1984 in class 1 and registration 27690 PIONEER dated 1972 in class 31. It also has trademark registrations for HI-BRED in class 5 in Australia, China, India and Thailand.

B. Respondent

The Respondent registered the disputed domain name on December 17, 2002. Its administrative and technical contact details disclose little about it save that it is a South Korean entity. Its true legal status and persona are not known.

The Respondent has defaulted so little can be established about its identity or its business.

The email contact for the Respondent is "mamishop@hotmail.com". The Hotmail address is known to be a common email address facility used by people who are in a small way of business and who do not wish to incur the trouble and expense of registering with a commercial ISP.

 

5. The Parties' Contentions

A. Complainant

Pioneer Hi-Bred contends that it is a famous or well known name and trademark internationally. For over three-quarters of a century no other entity has adopted or used the HI-BRED mark either alone or in any combination as a trademark for any goods or services. It therefore argues that the use by anyone else of the mark HI-BRED in conjunction with PIONEER would be taken as a clear and unmistakeable reference to the PIONEER HI-BRED company.

Pioneer Hi-Bred bases its case on its extensive use of the trademark together with its widespread recognition world-wide. That, together with the associated goodwill, is claimed to be of incalculable value to it. It says that the Respondent must have been aware of the PIONEER HI-BRED trademark and its associated goodwill by virtue of the exposure of that trademark internationally.

The Respondent appears to be domiciled in South Korea where Pioneer Hi-Bred has a presence and reputation. That presence and reputation in that jurisdiction together with the international reputation translates into a protectable goodwill.

As no other entity uses or has used PIONEER HI-BRED or HI-BRED, the combination of the name is a clear and unmistakeable reference to the Complainant. Wrongful use by the Respondent of that combination is said to be misappropriation of goodwill. It is also said to be a wrongful claim to an association with consequential detrimental effects on Pioneer Hi-Bred.

The Respondentís use of the disputed domain name for a website advertising the sale of the domain name is claimed to be wrongful and an attempt to attract and divert Internet traffic intended for Pioneer Hi-Bred.

B. Respondent

The Respondent having defaulted no reply is available from it. It is not known what its contentions in reply might be.

Nor is there any documentation in evidence of any letter before action or response from the Respondent to enable the Panelist to discern what, if any, purpose the Respondent had in mind when registering the disputed domain name. Nor is anything of any real benefit able to be established about its business or even precisely who or what the Respondent is.

However, Pioneer Hi-Bred has put in evidence (see Attachment 10 to the Complaint) a print-out of the Respondentís website. It is clear from this website that the Respondent appears to be offering the disputed domain for sale but not engaging in any other business activity with which the name may be associated. Nor is any sale price mentioned.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.

As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond.

In this instance the Respondent has defaulted. Whilst it is not considered that conventional common law notions of burden of proof have any particular relevance under the Policy, it is accepted that a Complainant must make out its case as also must a Respondent. No particular burden lies either way.

Rule 4(a) of the Rules for the Uniform Domain Name Dispute Resolution Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:

(i) The Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The Respondent's domain name has been registered and is being used in bad faith.

Each of the three elements must be proved by a Complainant to warrant relief.

As to the first ground, the disputed domain name <pioneerhibred.com> is identical to the common law trademark PIONEER HI-BRED and also to the registered trademarks PIONEER and HI-BRED. The addition of the ".com" suffix adds nothing by way of difference or distinguishing feature as has been held on many previous occasions by the present and other Panelists. The hyphenation of the combined word is irrelevant.

Moreover, as the Complainant PIONEER HI-BRED has its own website "pioneer.com" and the associated domain name, any other website and domain name such as <pioneerhibred.com> would be confusingly similar.

The PIONEER name alone is a sufficiently descriptive or generic word or name such that it on its own and without more could not sustain a claim to protection absent a very substantial body of evidence supporting such a claim. However, when combined with HI-BRED and particularly in the unusual or truncated spelling of those words, the combined name takes on or assumes a unique identity. That identity has for over three-quarters of a century been adopted and is possessed by the Complainant. Any resultant reputation and goodwill devolving from that combination of names or words therefore belongs to the Complainant.

Even in a relatively distant jurisdiction such as New Zealand this Panelist takes notice of the fact that Pioneer Hi-Bred (under a slightly different corporate style) successfully brought proceedings to protect its trademark in 1977 Ė see Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50. That report also features in a wider published and more internationally accessible series of reports at [1979] RPC 410.

There can be no doubt whatever that Pioneer Hi-Bred can establish and indeed has established a world-wide reputation and goodwill in its name and trading style PIONEER HI-BRED and that it has protectable rights to the trademark PIONEER HI-BRED.

Ground 4(a)(i) is accordingly made out.

As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not appear to have any business or trading operation known as or by reference to the trademark PIONEER HI-BRED.

The Respondentís website gives no clue as to any bona fide offering of goods or services under or by reference to the trademark. The use of the website as a vehicle to offer the disputed name for sale of itself tells against any such rights or legitimate interest.

The Respondent, having defaulted, has put forward no explanation in defence of its registration of the disputed domain name. If it had a legitimate interest it might be expected to have proffered some explanation.

Ground 4(a)(ii) is accordingly made out.

As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other Panelistís decisions, both elements must be made out. Thus, both registration and use in bad faith have to be established by the Complainant.

Given the enormous reputation and world-wide goodwill of Pioneer Hi-Bred the question inevitably arises, for what legitimate purpose or genuine reason might the Respondent have registered and be using the disputed domain?

It is immediately to be noted that the second half of the name "HI-BRED" is to an extent a contracted and corrupted combination of words. The word "hi" is a typically European contraction for or corruption of "high". The word "bred" is the past tense of "breed". The possibility of a South Korean entity or person innocently choosing such a combination and for genuine purposes is unlikely in the extreme.

Further, and whilst of itself not a major factor, the Panelist notes that the email address for the Respondent is "mamishop@hotmail.com". The hotmail address as previously indicated is customarily used by persons in a small way of business who do not wish to incur the expense of registering with a commercial ISP. The addition in the email address of the word "shop" to the Respondentís name perhaps suggests a commercial dealing with this domain name other than for a genuine purpose.

The Policy allows for various defences under ground 4(a)(iii). Included are the ability of a Respondent to recover its documented out-of-pocket costs directly related to the establishment of the domain name where it is to be sold or offered for sale.

In this case, the website of the Respondent offers the disputed name for sale. No price is mentioned. The sale appears to be on the open market and not directed towards the person who has a legitimate prior interest in it, namely Pioneer Hi-Bred. Moreover, the website and offer to sell appear to pre-date any action by Pioneer Hi-Bred. Thus it can be assumed that the Respondent established its website and associated domain name for the purposes of selling the domain name to whomever was interested and in all likelihood that the primary interest would be by Pioneer Hi-Bred.

There is no basis to find other than registration of the domain name was effected in bad faith.

Use in bad faith must also be established by a Complainant. The site is active. It is a logical domain name for anyone to try and access when seeking the genuine site of Pioneer Hi-Bred. Any person wanting to contact Pioneer Hi-Bred on the Internet would likely type in "pioneer hi-bred" either by reference to the URL or through a search engine. Thus, the Respondentís domain name and link to its website serves to divert legitimate Internet traffic intended for Pioneer Hi-Bred to the Respondent.

Whether that is for commercial gain by way of pass-through revenue or not is beside the point. There appears to be some likelihood that the Respondent may gain pass-through revenue. Nevertheless, that is not a pre-requisite for use in bad faith. Diversion or blocking of legitimate traffic destined for a prior rights owner amounts in itself to use in bad faith.

Ground 4(a)(iii) is accordingly made out under both limbs.

 

7. Decision

For the reasons set out above the Panelist finds:

(a) The domain name <pioneerhibred.com> registered by the Respondent is identical or confusingly similar to a trademark to which the Complainant Pioneer Hi-Bred has rights; and

(b) The Respondent does not have any rights or legitimate interests in respect of the domain name; and

(c) The Respondent's domain name was registered and is being used in bad faith.

Accordingly, pursuant to clause 4(i) of the Policy, the Panelist requires that the registration of the domain name <pioneerhibred.com> be transferred to the Complainant Pioneer Hi-Bred International Inc.

 


 

John Katz QC
Sole Panelist

Dated: October 29, 2002