The
Claim Number: FA0901001242950
Complainant is Hebrew University of Jerusalem (“Complainant”), represented by Sarah
L. Bruno, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <einsteinwebdesign.com>, registered with Register.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.
Honorable Tyrus R. Atkinson, Jr., Esq., Prof. Christopher S. Gibson, Prof. Darryl C. Wilson, (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 16, 2009.
On January 20, 2009, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <einsteinwebdesign.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 January
26, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
February 17, 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
postmaster@einsteinwebdesign.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 25, 2009, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Tyrus R. Atkinson, Jr. Esq., Prof. Christopher S. Gibson, Prof. Darryl C. Wilson (Chair) as Panelists.
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 <einsteinwebdesign.com> domain name is confusingly similar to Complainant’s EINSTEIN mark.
2. Respondent does not have any rights or legitimate interests in the <einsteinwebdesign.com> domain name.
3. Respondent registered and used the <einsteinwebdesign.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Hebrew
University of Jerusalem, is a non-profit educational institution in
Respondent registered the disputed <einsteinwebdesign.com> domain name on September 4, 2003. The disputed domain name currently resolves to a website that promotes Respondent’s web design business and previously utilized images and quotations of Dr. Albert Einstein.
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.
The Panel finds that Complainant’s registration of the EINSTEIN mark with the USPTO, confers sufficient rights in the mark upon Complainant pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also 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).”).
Respondent’s <einsteinwebdesign.com>
domain name contains Complainant’s EINSTEIN mark while including the words “web
design” and the generic top-level (gTLD) domain “.com.” The Panel finds that the addition of the
common words “web design” and the gTLD “.com” are insufficient to distinguish
the disputed domain name as it contains Complainant’s entire registered
EINSTEIN mark. Therefore, the disputed
domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant argues that Respondent is not licensed to use
Complainant’s mark, and that Respondent is not commonly known by the disputed
domain name. The Panel notes that the
WHOIS information lists Respondent as “Lisa Bagley.” There has been no
response whatsoever submitted by the Respondent that would attempt to explain
and provide legitimate reasons for why the word “EINSTEIN” was chosen to be
part of the Respondent’s domain name, nor is there any indication on the
Respondent’s website that would give rise to indications of rights or
legitimate interests on the part of the Respondent. Therefore, the Panel finds that Respondent
lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Respondent’s
disputed domain name resolves to a web design business that has used a number
of screens since their original registration all of which
have utilized Complainant’s EINSTEIN mark and have also used images and
quotations of Dr. Albert Einstein. The
Panel finds that the use of the confusingly similar disputed domain name in
connection with an unauthorized commercial website for computer services
unrelated to Complainant’s goods and services, along with the images and
quotations from Dr. Albert Einstein, fails to qualify as a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vanderbilt
Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did
not have rights or legitimate interests in a domain name where it was
redirecting Internet users to its own website promoting the respondent’s books
unrelated to the complainant); see also Prudential
Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov.
15, 2001) (finding no rights or legitimate interests in the disputed domain
name where the respondent was using the complainant’s mark to redirect Internet
users to a website offering credit card services unrelated to those services
legitimately offered under the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
This is a case in which the Respondent is operating a
business in the
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <einsteinwebdesign.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Tyrus R. Atkinson, Jr., Esq., Prof. Christopher S. Gibson, Prof. Darryl C. Wilson, (Chair), Panelist
Dated: March 11, 2009
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