National Arbitration Forum

 

DECISION

 

The Hebrew University of Jerusalem v. PSI Plastic Graphics

Claim Number: FA0910001291979

 

PARTIES

Complainant is The Hebrew University of Jerusalem (“Complainant”), represented by Halle B. Markus, of Arent Fox LLP, Washington, D.C., USA.  Respondent is PSI Plastic Graphics (“Respondent”), Missouri, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <einsteinrewards.com>, 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 G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 29, 2009.

 

On October 29, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <einsteinrewards.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name.  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 October 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 19, 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@einsteinrewards.com by e-mail.

 

A timely Response was received and determined to be complete on November 19, 2009.

 

 

On November 30, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant

 

Complainant asserts rights and alleges that the disputed domain name is confusingly similar to its trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

 

Respondent does not admit to any of the matters alleged by Complainant, but nor does it attempt to refute them.  Instead, its Response to the Complainant was in the following terms:

 

“We have released the domain and have no need for it.  We were asked a few months ago to eliminate the domain www.einsteinrewards.com and have done as asked.  We removed any images and references to einstein as asked.

 

So I ask why go through arbitration?

 

Hope this clears up this matter.

 

Thank-you

Michael Hallahan

PSI

www.idcard.com”

 

FINDINGS

1.      Complainant is a non-profit educational institute located in Israel and co-founded by Dr. Albert Einstein.

2.      Complainant is the owner of numerous trademark registrations that consist of or incorporate the word EINSTEIN[1] from which it derives substantial revenue through license agreements.

3.      The disputed domain name was registered on April 29, 2004.

4.      A website corresponding with the disputed domain name offers gift cards and marketing services.

5.      There is no relationship between the parties, nor has Complainant authorized Respondent to use any of its trademarks or to register any domain name incorporating them.

 

DISCUSSION

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;

(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.

 

Notwithstanding the foregoing, a panel may also grant a complainant’s requested relief when a respondent consents to that relief.

 

Preliminary Procedural Issue: Consent to Transfer

 

The Response can be read as an offer to transfer the domain name to Complainant[2].  The Response is authored by a Michael Hallahan however there is sufficient information to attribute the offer to transfer to Respondent.

 

There are no additional submissions from Complainant following the Response and so it can not be said that Complainant has joined Respondent in accepting transfer of the domain name.  Accordingly, the issue for this Panel is whether it should order transfer of the disputed domain name from Respondent to Complainant, or whether it should apply the Policy based on Complainant’s submissions.

 

Where there is a bipartisan request for transfer of a domain name it has been remarked that:

 

In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties.  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.[3]

 

In this case Complainant petitions the Panel to transfer the disputed domain names but has not expressly consented to the transfer nor withdrawn its request for the matter to be determined under the Policy.  Some former panelists have argued that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them.  By way of example, in Graebel Van Lines, Inc. v. Texas International Property Associates, FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:

 

Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy.  However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.

 

No doubt there are special cases of abusive registration where that approach is justified, however it has also been observed that panelists are directed by Rule 10(c) to ensure that administrative proceedings take place with due expedition.  So, for example, in the case of Citigroup Inc. v. Texas International Property Associates- NA NA, FA 1210904 (Nat. Arb. Forum Aug. 5, 2008), it was said:

 

Judicial economy and the very purpose of the UDRP demands expeditious and economical resolution of UDRP disputes. … A panel’s only purpose in rendering substantive Paragraph 4(a) findings is relegated to that end, and that end alone. What amounts to advisory opinions are not authorized by the Policy, Rules, or otherwise.  Therefore, when a respondent consents to a complainant’s requested relief and that complainant has rights in the at-issue domain name(s), then only under particular circumstance that call into question the validity of the respondent’s consent, or for similar other good cause, might a panel need to proceed to consider the merits of the complaint via further analysis under Paragraph 4(a).  Such circumstances are not present in the instant dispute, and so the requested relief must be granted.

 

There is no suggestion in the evidence before this Panel that Respondent is a cybersquatter or that it has habitually abused third party rights.  Indeed, the contrary indications are that it may have been simply naïve to Complainant’s intellectual property rights.  For those reasons, and on the facts of this case, this Panel sees no special reason to apply paragraph 4(a) of the Policy and so proceeds directly to its decision.

 

DECISION

It is Ordered that the <einsteinrewards.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Debrett G. Lyons, Panelist
Dated: December 12, 2009

 

 

 

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