Pioneer Hi-Bred International, Inc. v. Ingescom; Samuel Duran

WIPO Arbitration

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

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.

The Respondent

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.

Samuel Duran."

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:

"Hello,

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/

Case D2001-0201

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

samuelduran@ingescom.com"

5. Parties' Contentions

A. Complainant

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.

B. Respondent

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.

7. Decision

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.

Mary Padbury

Sole Panelist

Dated: May

22, 2001

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