Paul Hastings LLP v. Fred Thiel / GSZ Technology, Inc
Claim Number: FA1111001416334
Complainant is Paul Hastings LLP (“Complainant”), represented by Tim Wright of Paul Hastings LLP, California, USA. Respondent is Fred Thiel / GSZ Technology, Inc (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pualhastings.com>, registered with 1 & 1 INTERNET AG.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2011; the National Arbitration Forum received payment on November 18, 2011.
On November 23, 2011, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <pualhastings.com> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pualhastings.com. Also on November 29, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Respondent has failed to submit a response to the Complaint filed in this proceeding in compliance with the Policy and its accompanying Rules. However, since the filing of the Complaint, Respondent has communicated with the National Arbitration Forum via e-mail messages. While not required to do so, in the interests of justice, we will take the contents of those e-mail communications into account in rendering our decision in this matter.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a compliant response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a law firm which was founded in 1951 under the mark PAUL HASTINGS, and which now has 18 offices around the world.
Complainant owns trademark registrations on file with the United States Patent and Trademark Office (“USPTO”) for its PAUL HASTINGS trademark (including Reg. No. 2,629,236, registered October 1, 2002).
Respondent registered the disputed <pualhastings.com> domain name on September 8, 2006.
The disputed domain name does not resolve to an active website.
1.Respondent’s
<pualhastings.com> domain name is confusingly similar to
Complainant’s PAUL HASTINGS mark.
Respondent has not been commonly known by the disputed domain name.
Complainant has not granted Respondent permission to use Complainant’s PAUL HASTINGS mark in a domain name.
2.Respondent
does not have any rights to or legitimate interests in the domain name
<pualhastings.com>.
3.Respondent
both registered and uses the <pualhastings.com> domain name in bad
faith.
B. Respondent has failed to submit a response to the Complaint filed in this proceeding in keeping with the requirements of the Policy and its accompanying Rules. However, in an e-mail communication addressed to the National Arbitration Forum, Respondent has stated as follows: “I am willing to … transfer the domain name and thereby resolve the issue.”
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following to obtain from a Panel an order that a domain name be transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Notwithstanding the foregoing, 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 accord-ance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions (see, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum Jan. 13, 2004; see also Disney Enterprises, Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 24, 2005)).
DECISION
Respondent does not contest the material allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the disputed domain name be transferred to Complainant. Rather Respondent has communicated to the National Arbitration Forum, via e-mail message, its willingness to have the contested domain name transferred to Complainant. Thus the parties have effectively agreed in writing to a transfer of the subject domain name from Respondent to Complainant without the need for further proceedings.
It is therefore Ordered that the <pualhastings.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 7, 2012
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