Pleasant Hill Farm, Inc. v. Heinsohn's c/o Leslie Heinsohn
Claim Number: FA0903001251237
Complainant is Pleasant
Hill Farm, Inc. (“Complainant”), represented by Andrew Willis, of Cline, Williams, Wright, Johnson &
Oldfather, LLP,
REGISTRAR
The domain name at issue is <prairiehillgrain.com>, registered with Godaddy.com, Inc.
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.
Complainant submitted a Complaint
to the National Arbitration Forum electronically on
On
On March 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 2009 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@prairiehillgrain.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <prairiehillgrain.com> domain name is confusingly similar to Complainant’s PLEASANT HILL GRAIN mark and PLEASANT HILL GRAIN – GOODNESS FROM THE NEBRASKA PRAIRIE mark.
2. Respondent does not have any rights or legitimate interests in the <prairiehillgrain.com> domain name.
3. Respondent registered and used the <prairiehillgrain.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pleasant Hill Farm, Inc., has been running an
online store under the PLEASANT HILL GRAIN mark in connection with kitchen
appliances at the <pleasanthillgrain.com> domain name since
Respondent registered the <prairiehillgrain.com> domain name on
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant has sufficiently established rights in the PLEASANT HILL GRAIN mark under Policy ¶ 4(a)(i) because it holds a registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The only evidence Complainant has submitted in its attempt
to establish secondary meaning in this mark are several Google search results
for the term “prairie hill grain.” These
search results do not show any extensive use of Complainant’s PLEASANT HILL GRAIN – GOODNESS FROM THE NEBRASKA PRAIRIE
mark or show that Complainant’s mark has
achieved a secondary source identity; therefore, Complainant has not
established any common law rights in its PLEASANT HILL GRAIN – GOODNESS FROM
THE NEBRASKA PRAIRIE mark under Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19,
2003) (“
Complainant asserts that Respondent’s <prairiehillgrain.com>
domain name is confusingly similar
to Complainant’s PLEASANT HILL GRAIN mark. However, Complainant disclaimed the exclusive
right to use “GRAIN” apart from the mark.
Therefore, because the disputed domain name does not contain Complainant’s
entire mark, Complainant cannot claim any rights to the word “GRAIN.” The Panel finds that the only similarity
between the disputed domain name and Complainant’s mark is the generic term
“hill” because the generic terms “pleasant” and “prairie” are not similar and
the addition of the generic top-level domain (“gTLD”) is irrelevant for
analysis under Policy ¶ 4(a)(i). Thus,
the Panel finds that the disputed domain name is not confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i).
See Cigarettes Cheaper!, Inc. v.
World Wide Brands, FA 100490 (Nat. Arb. Forum Nov.
21, 2001) (deciding that the <cigarettescheap.net> domain name was not
confusingly similar to the complainant’s CIGARETTES CHEAPER!, as the domain
name was made up of two generic terms); see
also Webvan Group, Inc. v. Atwood, D2000-1512 (WIPO Feb. 20, 2001) (“[W]hen
a mark is a relatively weak non-distinctive term, courts have found that the
scope of protection may be limited to the identical term and that the addition
of other descriptive matter may avoid confusion”); see also Trip Network Inc. v.
The Panel concludes
that Complainant has not satisfied Policy ¶ 4(a)(i) and will decline to analyze
the other two elements of the Policy. See
Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept.
20, 2002) (finding that because the complainant must prove all three elements
under the Policy, the complainant’s failure to prove one of the elements makes
further inquiry into the remaining element unnecessary); see also Hugo Daniel
Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.
Because the Panel
concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel will
decline to analyze Policy ¶ 4(a)(ii).
Because the Panel
concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel will
decline to analyze Policy ¶ 4(a)(ii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated: April 21, 2009
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