national arbitration forum




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, Nebraska, USA.  Respondent is Heinsohn's c/o Leslie Heinsohn (“Respondent”), Texas, USA.




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


Bruce E. Meyerson as Panelist.




Complainant submitted a Complaint to the National Arbitration Forum electronically on March 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 9, 2009.


On March 9, 2009,, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with, Inc. and that Respondent is the current registrant of the name., Inc. has verified that Respondent is bound by the, Inc. 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 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 by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On April 7, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.


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 <> 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 <> domain name.


3.      Respondent registered and used the <> 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 <> domain name since February 18, 1999.  Complainant holds a registration for this mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,057,844 issued February 7, 2006).  The registration contains a disclaimer to the exclusive right to use the word “GRAIN” apart from mark.  In addition, Complainant has adopted use of the PLEASANT HILL GRAIN – GOODNESS FROM THE NEBRASKA PRAIRIE mark.


Respondent registered the <> domain name on October 18, 2007.  The disputed domain name resolves to a website that sells products in competition with Complainant.




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.


Identical and/or Confusingly Similar


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.").


Although Complainant holds a registration of its PLEASANT HILL GRAIN mark, Complainant has failed to establish rights in the PLEASANT HILL GRAIN – GOODNESS FROM THE NEBRASKA PRAIRIE mark.  Because Complainant holds no registered trademark for PLEASANT HILL GRAIN – GOODNESS FROM THE NEBRASKA PRAIRIE, Complainant must demonstrate common law rights in this mark.  In order to establish common law rights in a mark, a trademark owner must establish secondary meaning in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark). 


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) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products).


Complainant asserts that Respondent’s <> 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 <> 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. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).


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 Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).


The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.


Rights or Legitimate Interests


Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel will decline to analyze Policy ¶ 4(a)(ii). 


Registration and Use in Bad Faith


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.




Bruce E. Meyerson, Panelist

Dated:  April 21, 2009



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