Advanced Medical Imaging
Systems, LLC v. RPena Technologies c/o Ricardo Pena
Claim Number: FA0712001116751
PARTIES
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
Pena (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <onepacs.com>, <onepacs.net> and <onepacs.org>, registered
with Godaddy.com,
Inc.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@onepacs.com,
postmaster@onepacs.net, and postmaster@onepacs.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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant. As discussed
below, Respondent agrees to that transfer.
PARTIES’ CONTENTIONS
A. Complainant
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.
B. Respondent
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.”
FINDINGS
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.
DECISION
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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