Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Sandhill Wholesale of Ohio, Inc., Columbus, OH, USA ("Complainant") represented by Scott E. Cofer, Greve, Clifford, Wengel & Paras, LLP. The Respondent is Chris Hatton d/b/a Sand Hill Wholesale Ceder Lod Furniture, Homewood, CA, USA ("Respondent").

The domain names at issue are "sandhillwholesale.com" and "sandhillwholesale.net" registered with Internet Domain Registrars.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on November 10, 2000; The Forum received a hard copy of the Complaint on November 10, 2000.

On November 14, 2000, Internet Domain Registrars confirmed by e-mail to The Forum that the domain names "sandhillwholesale.com" and "sandhillwholesale.net" are registered with Internet Domain Registrars and that the Respondent is the current registrant of the name. Internet Domain Registrars has verified that Respondent is bound by the Internet Domain Registrars registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 15, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 5, 2000 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@sandhillwholesale.com and postmaster@sandhillwholesale.net by e-mail.

On December 12, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

The Forum received a response from the Respondent before commencement of the proceeding. Therefore, the response was not timely and is not accepted by the Panelist.

Complainant is a corporation duly incorporated and operating under the laws of the State of Ohio.

Complainant is the holder of a federal trademark for "SANDHILL" pursuant to Federal Trademark Registration No. 1225729, filed January 26, 1981. Consequently, as early as May 13, 1983, Complainant has been using the name and mark "SAND HILL WHOLESALE" for the conducting of its business on a nationwide basis in the United States. Complainant is also the holder of a pending federal trademark application for the name and mark "SAND HILL WHOLESALE." Finally, Complainant is the holder of State trademarks for the name and mark "SAND HILL WHOLESALE" in the States of California and Nevada.

Since the early 1980s, Complainant has been a well-known national distributor of wood stove, fireplace and gas heating products within the chimney professional products business. Since the early 1980’s, Complainant has consistently and actively used its "SAND HILL" and "SAND HILL WHOLESALE" marks on a national basis.

Respondent operates, or at least operated in late 1999, a business that was represented to Complainant as being named "ACS Air Cleaning Services." It is also believed that this business is or was also referred to as "A Clean Sweep Chimney Service."

On December 16, 1999, Respondent placed an order with Complainant for certain of its accessory products. Those products were delivered to Respondent at its place of business on December 23, 1999.

In early March 2000, in preparing to obtain the domain name "sandhillwholesale.com," Complainant discovered that Respondent had registered that name on February 9, 2000, barely one month after placing its order. Complainant also discovered that at that same time, Respondent registered the domain name "sandhillwholesale.net". In each of those domain name search results, it was stated "Domain for Sale."

On March 8, 2000, trademark counsel for Complainant corresponded with Respondent demanding that Respondent cease all use of and transfer to Complainant the "sandhillwholesale.com" and "sandhillwholesale.net" domain names.

As a matter of further background, Respondent appears to have a propensity of filing for a variety of different business names. In the County of Placer, State of California, alone, Respondent has filed fictitious business name statements for not less than 12 different business names, including:

12. Sand Hill Wholesale Cedar Log Furniture

Respondent did not file a fictitious business name statement for "Sand Hill Wholesale Cedar Log Furniture" until March 29, 2000, following receipt of the demand letter from Complainant’s trademark counsel. After being confronted by Complainant’s trademark counsel, Respondent notified counsel for Complainant that the domain names were not for sale, and that they were never for sale.

Prior to notice of the dispute, the Respondent displayed no website in connection with the domain names.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Complainant is the owner of all rights, title and interest in the marks "SAND HILL" and "SAND HILL WHOLESALE." The registered mark "SAND HILL" was first used in 1978. The pending mark "SAND HILL WHOLESALE" was first used in 1983. Under applicable law, it is the actual use of a mark in commerce that creates the underlying protection for both registered and unregistered marks. Unregistered marks are protected by statutory and common law principles in the same manner as registered marks. The subsequent registration of a long-used, but unregistered mark, does not affect the long-standing rights acquired by that unregistered mark under statutory and common law principles. The Complainant holds a common law trademark in the mark "SAND HILL WHOLESALE."

The domain names in question are confusingly similar to the Complainant’s registered mark and identical to the Complainant’s common law mark. See William Hill Organisation Limited v. Seven Oaks Motoring Centre, D2000-0824 (WIPO Sept. 4, 2000) (finding that the domain names, <williamhill.org>, <williamhill.net>, <williamhillscasino.com>, are identical and confusingly similar to the Complainant’s marks WILLIAM HILL, WILLIAM HILL LUCKY CHANCE, WILLIAM HILL LUCKY CHOICE, and WILLIAM HILL LUCKY BET).

The Respondent has acquired no rights or legitimate interests in the disputed domain names in accordance with Policy ¶ 4.c.

The Respondent does not operate for and is not associated in any way with, nor is Respondent licensed by Complainant to make use of the marks or names "SAND HILL" or "SAND HILL WHOLESALE."

Prior to commencement of the domain name dispute, Respondent had not in any material manner used or prepared to use the disputed domain names in connection with a bona fide offering of goods or services. Policy ¶ 4.c.(i). The Respondent has also not attempted to use the domain name for noncommercial purposes. Policy ¶ 4.c.(iii). The registration of another’s trademark as a domain name does not constitute a bona fide offering of goods or services when the website owner has no common law or statutory rights to the mark. See Barney’s, Inc. v. BNY Bulletin Board, D2000-0059 (WIPO Apr. 2, 2000). The only apparent reasons for Respondent to register the "SAND HILL WHOLESALE" domain names would be to capitalize upon Complainant’s intellectual property rights and to benefit from the goodwill associated with the "SAND HILL" and "SAND HILL WHOLESALE" names.

The Respondent is and has not been commonly known by the disputed domain name. Policy ¶ 4.c.(ii). The Respondent has not in any material manner used or traded using the domain names or the term "SAND HILL WHOLESALE" prior to the dispute arising.

Based on the above, the Panel determines that the Complainant has established the elements set forth in Policy ¶ 4.a.(ii).

Upon its registration on February 9, 2000, through March 2, 2000, and at least up until March 14, 2000, Respondent listed both the disputed domain names as being "Domain For Sale." This indicates that the Respondent registered and used the domain name for the purpose of reselling it. UDRP precedent indicates that this type of behavior is sufficient to meet the elements set forth in Policy ¶ 4.b.(i). See Microsoft Corp. v. Amit Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where that Respondent registered the domain name for the purpose of selling it, as revealed by the name the Respondent chose for the registrant, "If you want this domain name, please contact me").

Further, given the timing of registration of the "SAND HILL WHOLESALE" domain names and the filing of his fictitious business name statement shortly after first doing business with Complainant, the Panel finds bad faith registration and use of the domain names.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names "sandhillwholesale.com" and "sandhillwholesale.net" be transferred from the Respondent to the Complainant.