Complainant is Sandvik Smith AB, Houston, TX ("Complainant") represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is Sandvik& Smith a/k/a Paul Sandvik a/k/a Brian Evans, Las Vegas, NV ("Respondent").

The domain name at issue is <sandviksmith.com>, registered with GKG.net, Inc.

The undersigned Daniel B. Banks, Jr., as panelist, 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 ("the Forum") electronically on August 24, 2001; the Forum received a hard copy of the Complaint on August 27, 2001.

On September 5, 2001, GKG.net, Inc. confirmed by e-mail to the Forum that the domain name <sandviksmith.com> is registered with GKG.net, Inc. and that the Respondent is the current registrant of the name. GKG.net, Inc. has verified that Respondent is bound by the GKG.net, 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 September 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 25, 2001 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@sandviksmith.com by e-mail.

A timely response was received and determined to be complete on September 11, 2001.

On September 26, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr. as Panelist.

Complainant requests that the domain name be transferred from Respondent to Complainant.

On August 14, 2001, Sandvik Equipment and Supply Company and Smith International, Inc. announced the formation of a joint venture company, Sandvik Smith AB, (hereafter Complainant) to design, manufacture and market roller-cone and specialty drill bits used in the mining and construction industry. A press release was widely distributed by both Sandvik and Smith and there were numerous stories in the press about the joint venture. (Copies of those press releases and news stories were attached to the Complaint.)

A few hours after the press release, Respondent registered the disputed domain name <SandvikSmith.com> using the registrant name SFXB and B Evans. (A copy of the whois printout showing this registration was attached.)

Sandvik has continuously used its trademark and trade name since 1862. It is based in Sweden and is a high-technology engineering group with advanced products and world-leading positions in selected areas of tools for metalworking, machinery and tools for rock excavation, stainless steel, special alloys and resistance heating materials and process systems. It has 35,000 employees in 130 countries with annual sales of $4 billion. It owns numerous trademark registrations in many countries around the world. It also owns eighteen U.S. registrations that incorporate its well-known Sandvik mark.

Smith International, Inc. is a leading worldwide supplier of premium products and services to the oil and gas exploration and production industry, the petrochemical industry and other industrial markets through its four principal business units, namely Smith Bits, Smith Services and Wilson. It employs more than 10,000 full-time personnel on a global basis and last reported revenues of $3.2 billion. Smith owns numerous trademark registrations in many countries around the world and owns a U.S. registration for Smith Tool, which was first used in 1959.

Both Sandvik and Smith have invested substantial time, effort and money in developing their respective trademarks, trade names and the good will associated therewith. The joint venture company, Sandvik Smith has rights in its trade name Sandvik Smith and in its highly distinctive trademark, Sandvik Smith.

The domain name registered by the Respondent is a combination of the registered trademarks of Sandvik and Smith and is identical or confusingly similar to Complainant's name.

The Respondent has no rights or legitimate interest in the disputed domain name. Respondent is not known by either Sandvik or Smith nor does Respondent have any connection with the Sandvik Smith trademark or trade name. Although Respondent asserts that Mr. B. Evans transferred the domain name to a Mr. Paul Sandvik as shown on the whois printout, this was done after Complainant had notified Respondent of its infringing registration and was done to conceal its true identity and to create a mistaken belief that the actual registrant had some bona fide and legitimate connection with the domain name. However, extensive efforts to locate Mr. Paul Sandvik at the address listed on the current whois record failed. According to Susie Carpenter, whose affidavit is attached, no individual named Paul Sandvik resides anywhere in the entire State of Nevada. Mr. Brian Evans resides at the address listed. Complainant asserts that this leads to the conclusion that Respondent falsified the registration data.

Respondent also asserts that the current registrant is actually the Sandvik & Smith Company. However, according to the affidavit of Susie Carpenter, extensive efforts to locate any corporation named Sandvik & Smith, or any variant thereof, anywhere in the United States has failed.

Respondent registered and is using the domain name in bad faith in that it was registered to prevent the Complainant from using its trademark and trade name in a corresponding domain name; that Respondent is passively holding the domain name; that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant for valuable consideration in excess of documented out-of-pocket expenses related to the name; and that Respondent acted in bad faith when it willfully falsified the registration data.

Complainant asserts that, when it requested the Respondent to transfer the name to Complainant, Respondent attempted to sell the domain name for $8,500. This is indicated by an email attached to the complaint.

B. Respondent:

Although the named Respondents are Sandvik & Smith a/k/a Paul Sandvik a/k/a Brian Evans, the response in this case consists of an email transmission to The Forum from H.Wilson, as president of ClosetSpace.com. In that transmission, Mr. Wilson states that he owns and operates Closet Space.com and that he was completely taken by surprise by this complaint. He states that Paul Sandvik, an attorney, is one of his clients; that he, Sandvik, and his wife wished to form a website; and, that the disputed domain name was used to form this website. He further asserts that the disputed names are generic, are not famous names and are not trademarked in any way.

Mr. Wilson states that the domain name was never offered for sale and has no idea where the email offering the site for sale was originated. He says it was clearly not from him and did not come from the administrative contacts email address as listed in the Network Solutions whois database. He suggests that it may have been manufactured by Complainant in order to gain favor in this case.

Mr. Wilson says his clients never heard of this company, never read the press releases and would have no way of knowing that this Complainant wanted to form a company by the same name. He says that Mr. Sandvik has expressed shock that he was named in this dispute.

After consideration of the matters submitted in this case, this panelist finds as follows:

1 - That the domain is identical or confusingly similar to a trademark or tradename in which the Complainant has rights.

2 - That the Respondent has no rights or legitimate interests in respect of the domain name.

3 - That the Respondent registered and is using the name in bad faith.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

Paragraph 4(a) of the 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 contends that it has rights in the SANDVIK and SMITH marks individually, as Complainant is the owner of such registrations on the Principal register of the United States Patent and Trademark Office. This panelist finds that the disputed domain name is confusingly similar to Complainant’s SANDVIK and SMITH marks, as the domain name is merely a combination of Complainant’s two marks. See EntergyShaw LLC v. CPIC Net, FA 95950 (Nat. Arb. Forum Dec. 8, 2000) (finding that Policy ¶ 4(a)(i) had been satisfied because "the joint venture company name, as well as the domain names at issue, are comprised of Complainant’s ENTERGY and SHAW marks").

In addition, this Panel finds that the disputed domain name is so confusingly similar a reasonable Internet user would assume that the domain name is somehow affiliated with Complainant. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Respondent is not commonly known by the domain name in question, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. See EntergyShaw LLC v. CPIC Net, FA 95950 (Nat. Arb. Forum Dec. 8, 2000) (finding no rights or legitimate interests where Respondent registered the domain names at issue on the same day Complainant issued a press release regarding a forthcoming joint venture, to be known as EntergyShaw L.L.C.).

Complainant contends that there is no Paul Sandvik and that Respondent has falsified the registration data in an attempt to conceal its true identity, and to create a mistaken belief that the actual registrant had some bona fide and legitimate connection with the domain name. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding no rights or legitimate interests where the Respondent’s proposed business plan does not correspond with the Respondent’s use of the word "Reuters" or the acronym "REttungsUnfallTransportERkennungsServiceMOBILE" which the Respondent claims the domain name represents).

Additionally, this Panel finds that Respondent’s passive holding is not a bona fide offering of goods under 4(c)(i). See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

The evidence in this case convinces this Panel that the Respondent registered the disputed domain name under circumstances that leads to a reasonable conclusion that Paul Sandvik does not exist. This is based on the fact that neither Respondent Paul Sandvik nor his wife submitted any affidavits or response to support the assertions set out in the response filed by H. Wilson. There is also no evidence presented that there exists a Sandvik & Smith Company.

This Panel finds that Respondent has acted in bad faith by passively holding the domain name at issue since its registration. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding passive holding is evidence of bad faith); see also Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enters., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).

The evidence in this case supports a finding that Respondent acquired the domain name at issue primarily for the purpose of selling, renting, or otherwise transferring the domain name registration. See Corinthians Licenciamentos LTDA v. Sallen, D2000-0461 (WIPO July 17, 2000) (finding bad faith where Respondent’s claimed use for the mark was "most likely an excuse for camouflaging the purpose of trafficking with the domain name").

The evidence in this case also supports a finding that Respondent has shown opportunistic bad faith registration and use by registering a domain name after learning about the merger of the two businesses. See EntergyShaw LLC v. CPIC Net, FA 95950 (Nat. Arb. Forum Dec. 8, 2000) ("Respondent’s opportunistic bad faith is obvious. Respondent registered the domain names at issue the very day Complainant issue a press release regarding the proposed joint venture. Such timing cannot be a coincidence"); see also Time Warner Inc. and EMI Group plc v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that Respondent registered and used the domain names <emiwarnermusic.com>, <emiwarner.org>, <emiwarner.net>, <warneremi.net>, and <warneremi.org> in bad faith pursuant to Policy ¶ 4(b)(i), (ii) and (iii), because Respondent registered the domain names after Complainant issued a press release of the proposed merger between Complainants); see also The London Metal Exch. Ltd. v. Hussain, D2000-1388 (WIPO Dec. 15, 2000) (finding bad faith bad faith pursuant to Policy ¶ 4(b)(i) where Respondent registered <lmeholdings.com> on the same day that a news article was published regarding the complainant’s new company called "LME Holdings Limited").

It is decided that the disputed domain name <sandviksmith.com> be transferred to the Complainant.