Advanced Medical Imaging Systems, LLC v. RPena Technologies c/o Ricardo Pena
Claim Number: FA0712001116751
Complainant is Advanced Medical Imaging Systems, LLC (“Complainant”), represented by Bruce
A. McDonald, of Schnader Harrison Segal & Lewis LLP,
1600 Market Street, Suite 3600, Philadelphia, PA 19103-7213. Respondent is RPena Technologies c/o Ricardo
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <onepacs.com>, <onepacs.net> and <onepacs.org>, 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.
Debrett Gordon Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 3, 2007.
On December 3, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <onepacs.com>, <onepacs.net> and <onepacs.org> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 December 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 2008 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 firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received on January 1, 2008. The Response was deficient under ICANN Rule 5 as it was not received in hard copy.
A timely Additional Submission from Complainant was received and determined to be complete on January 7, 2008.
On January 10, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett Gordon Lyons as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant. As discussed below, Respondent agrees to that transfer.
Complainant asserts trademark rights and alleges that the disputed domain names are confusingly similar to the trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith.
Respondent broadly denies Complainant’s allegations.
Respondent has provided Complainant with a signed documented addressed to the Forum entitled “Consent to Transfer Disputed Domain Names.”
Preliminary Procedural Issue
A preliminary issue arises as to whether the Panel has a proper mandate to decide this case under the Policy given that the parties appear to have reached agreement over the disposition of the disputed domain names.
So, for example, in the case of Disney Enterprises., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005), it was said that “where Respondent has agreed to comply with Complainant’s request [to transfer the domain name], the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.” In Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) the panel decided that “the parties have both asked for the domain name to be transferred to the Complainant .... Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.” See also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003).
By way of contrast, in the case of State Farm Mutual Automobile Insurance Co. v. Richard Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007), it was common ground between the parties that, prior to the filing of the complaint, respondent had offered to transfer the disputed domain name to complainant and complainant had accepted that offer. Nonetheless, complainant had taken a decision to press forward and file the complaint. Respondent in that case then wrote to the Forum stating in a letter that it “agreed with the complaint and agreed to release the Domain name.” That post-complaint correspondence was copied to complainant, but complainant did nothing to indicate whether it wished to abandon the complaint or not. In those circumstances, the panel drew the inference that the complaint was maintained and so went on to decide the dispute under the terms of the Policy.
In this case, additional submissions filed by Complainant annex a copy of a document entitled “Consent to Transfer Disputed Domain Names.” In the body of that document, it is said: “The parties having settled this matter in a private agreement, Respondent hereby consents to transfer of disputed domain names to Complainant.”
The disputed domain names referenced in that Consent letter correspond with the disputed domain names in question here. The letter is addressed to the Forum and is dated January 4, 2008. It is signed by Ricardo Pena. The signature can not be compared with another since the Response was only filed electronically and was not signed. Nevertheless, it appears to read as a signature of the name, Ricardo Pena. The signature is followed by an address which is the address of Respondent as it appears elsewhere in the papers. Forensically, there is nothing to suggest that the letter was not genuinely produced by Respondent.
Complainant’s additional submissions state that it is “filing herewith a Consent to Transfer Disputed Domain Names which has been provided by Respondent following a course of amicable communications leading to a settlement agreement over the past 72 hours. If the Panelist accepts the Consent, then there is no need to consider this Reply.” The additional submissions then proceed to address the Response, point by point. The additional submissions end with the words: “This Reply, which had already been prepared, is material only if, for reasons unknown to Complaint, that Consent is not per se sufficient to dispose of this case.”
Respondent has not contradicted any of those statements in any way or acted in any contrary manner.
The Panel finds that it is the clear intention of the parties that the disputed domain names be immediately transferred from Respondent to Complainant. For that reason, it has no mandate to apply the Policy.
It is the agreed intention of the parties that the disputed domain names be transferred. Accordingly, it is Ordered that the <onepacs.com>, <onepacs.net> and <onepacs.org> domain names be TRANSFERRED from Respondent to Complainant.
Debrett Gordon Lyons, Panelist
Dated: January 23, 2008
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