GDOT.com: Girls Delivered On Time beats Georgia Department of Transportation!

Gotta love acronyms and in the case of GDOT.com, the Georgia Department of Transportation filed a UDRP against a massage domain that apparently stands for “Girls Delivered On Time.”

The Complainant asserted rights to the GDOT mark registered in 2020. The disputed domain was registered in 2003. Past captures of the domain indicate that in the past it was offered for sale for up to $50,000 dollars or displayed some oddball landing pages. The current one appears to have been created after 2023 and most likely in recent months.

Despite the Respondent’s lack of a response, the sole Forum panelist advocated for them, noting:

“The related claim that “NameCheap [or Respondent] is disrupting Complainant’s business by misleading and confusing the relevant public into believing that Girls Delivered On Time is affiliated with, sponsored by, or endorsed by Complainant” is unconvincing. Finally, the assertion that the use of the disputed domain name misdirects an unwitting public to a website that may push sex trafficking, phishing, or spreading malware, is speculative and unfounded.”

Final decision: Deny the transfer of GDOT.com—Girls Delivered On Time—to the Complainant, and that’s a happy ending.

Georgia Department of Transportation v. Nate Portney

Claim Number: FA2503002144054

PARTIES

Complainant is Georgia Department of Transportation (“Complainant”), represented by Katrina M. Quicker of Quicker Law, LLC, Georgia, USA. Respondent is Nate Portney (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is gdot.com, registered with NameCheap, 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 Forum electronically on March 7, 2025; Forum received payment on March 7, 2025.

On March 11, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the gdot.com domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 11, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2025 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@gdot.com. Also on March 11, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

On April 1, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a government agency responsible for planning, designing, developing, constructing, maintaining, and improving state and federal transportation infrastructure in the State of Georgia, while providing planning and support for other transportation systems ranging from airports to mass transit and bicycle trails.

Complainant undertakes those activities using the trademark GDOT and asserts exclusive rights to that trademark in connection with transportation services.

Complainant states that the disputed domain name “is identical to Complainant’s registered GDOT Mark except for the inconsequential addition of the generic top-level domain ‘.com’.”

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it is not known by the same name and has not been authorized to use the trademark.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith having targeted Complainant and its trademark.

In particular, Complainant states that a website resolving from the disputed domain name carries advertisements to “Girls Delivered on Time”. Complainant contends that “NameCheap is disrupting [Complainant’s] business by misleading and confusing the relevant public into believing that Girls Delivered On Time is affiliated with, sponsored by, or endorsed by [Complainant], when this is not the case.” Further, that the use “is clearly meant to misdirect an unwitting public towards a website that may push sex trafficking, phishing, or spreading malware.”

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The factual findings pertinent to the decision in this case are that:

1. Complainant provides transportation services in the US State of Georgia by reference to the trademark GDOT which is registered in Complainant’s name with the United States Patent & Trademark Office (“USPTO”) as Reg. No. 6,136,416, from August 25, 2020;

2. the disputed domain name was registered on May 18, 2003, using a privacy service to shield the name of Respondent; and

3. the disputed domain name currently resolves to a website which essentially promotes massage services under the slogan, “Girls Delivered on Time”.

DISCUSSION

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.”

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.

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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of the trademark GDOT with the USPTO, a national trademark authority.

The Panel finds that the compared terms are identical since, for the purposes of comparison, the gTLD, “.com” can be disregarded (see, for example, Morgan Stanley v. Morgan Stanley, FA 1169733 (Forum May 3, 2008) finding addition of a gTLD irrelevant for the purposes of comparison; Morgan Stanley v. nashan, FA 1706094 (Forum Jan. 23, 2017) finding morgan-stanley.xyz identical to complainant’s MORGAN STANLEY mark).

The Panel therefore finds that the requirements of paragraph 4(a)(i) of the Policy are satisfied.

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

The name of Respondent was shielded by a privacy service. Once revealed in consequence of these proceedings as Nate Portney, nothing indicated that Respondent might be commonly known by the domain name (see, for example, Tercent Inc. v. Lee Yi, FA 0139720 (Forum Feb. 10, 2003) stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply”).

There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and the Panel accepts that statement. Both the Complaint and the Amended Complaint then state that:

“there can be no doubt that NameCheap chose, registered, and is currently using a domain name that is confusingly similar to—and, in fact, identical to—GDOT’s own domain name gdot.ga.gov in an effort to profit from consumer confusion based on GDOT’s legitimate, official government website.”

Namecheap, the Registrar, did not do anything of the sort. Further, the disputed domain name is not identical to the domain name Complainant has registered, even if that was a relevant consideration under the Policy. Furthermore, how Respondent might profit from confusion is unclear. The related claim that “NameCheap [or Respondent] is disrupting Complainant’s business by misleading and confusing the relevant public into believing that Girls Delivered On Time is affiliated with, sponsored by, or endorsed by Complainant” is unconvincing. Finally, the assertion that the use of the disputed domain name misdirects an unwitting public to a website that may push sex trafficking, phishing, or spreading malware, is speculative and unfounded.

Nevertheless, Complainant cites three UDRP decisions of relevance – Isleworth Land Co. v. Lost In Space, SA, FA0208000117330 (Forum Sept. 27, 2002) finding that the respondent’s use of its domain name to resolve to an adult orientated website with images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a non-commercial or fair use; Am. Online, Inc. v. Bates, FA0309000192595 (Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another’s mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”); Paws, Inc. v. Zuccarini, FA0209000125368 (Forum Nov. 15, 2002) finding that use of a domain name confusingly similar to the complainant’s mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence non-commercial or fair use of the domain name by a respondent”).

The Panel observes that whilst “tarnishment” is a familiar concept in trademark law, under the Policy genuine use of the disputed domain name in respect of massage services may show a respondent to have a legitimate interest in a domain name. However, Complainant states that “there is no evidence of any organization called Girls Delivered on Time existing within the U.S., authorized to do business in any state within the U.S., or having obtained the required state licenses for individuals to perform massage therapy.”

Taken together, the Panel finds that a prima facie case has been made. The onus shifts to Respondent to show a right or interest in the domain name. In the absence of a Response, the Panel finds that Respondent has not met that onus and so finds that Complainant has satisfied the second limb of the Policy.

Registration and Use in Bad Faith

Complainant must prove both that the disputed domain name was registered in bad faith and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.

The Complaint does not expressly rely on any of those scenarios. The most relevant submission is that:

“… through its bad-faith use of the Disputed Domain Name, NameCheap is disrupting [Complainant’s] business by misleading and confusing the relevant public into believing that Girls Delivered On Time is affiliated with, sponsored by, or endorsed by [Complainant], when this is not the case.

Putting to one side the misconceived reference to NameCheap, the submission is an amalgam of the language of paragraphs 4(b)(iii) and (iv) of the Policy but does not satisfy either since, in terms of paragraph 4(b)(iii), Complainant and Respondent are not competitors and, in terms of paragraph 4(b)(iv), there is no plausible inference of commercial gain by reason that internet users would be misled to think that Girls Delivered On Time is affiliated with, or sponsored or endorsed by Complainant.

Accordingly, the Complaint must prove, as separate matters, registration in bad faith and use in bad faith. So far as registration in bad faith is concerned, the Complaint is silent on the fact that the disputed domain name was registered in 2003, more than twenty years ago. There is no explanation as to why it has taken so long to commence these administrative proceedings. The WIPO Overview of WIPO Panel Views records the consensus opinion of UDRP panels that the UDRP has not specifically adopted the concept of laches, but notes that delay in filing a UDRP complaint may make it difficult for a complainant to establish its case on the merits (see WIPO Overview, Third Edition, #4.17).

On the evidence, USPTO Reg. No. 6,136,416, is the earliest of Complainant’s trademark registrations and has a filing date of March 11, 2020. It therefore postdates the creation date of the disputed domain name by seventeen years. Nonetheless, the Complaint states that the trademark has been in continuous use since it was first used in commerce and the Panel observes that Reg. No. 6,136,416 carries a first use in commerce date of January 1, 1972. Albeit not conclusive proof of first use, still less of continuous use, there is nothing contradictory in the evidence and the Panel accepts that the trademark was in use in the State of Georgia long before the domain name was created.

The Panel finds that the trademark has no common meaning or connotation other than as a reference to Complainant and, absent a Response, finds that there is nothing to explain adoption of the disputed domain name by Respondent for massage services (or at all).

The limited research undertaken by the Panel, in this case using the WayBack Machine internet archive, does not show meaningful use of the disputed domain name before 2023 when it first resolved to the described website. Whether Respondent, Nate Portney, is the original owner and registrant of the disputed domain name is unclear on the evidence but, assuming that to be so, the question is whether he – a Californian resident – had Complainant’s trademark in mind in May 2003. The WIPO Overview states at #4.2 that:

“[t]he applicable standard of proof in UDRP cases is the ‘balance of probabilities’ or ‘preponderance of the evidence’; some panels have also expressed this as an ‘on balance’ standard. Under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true.

The Panel could not find Nate Portney as a named respondent in any published UDRP decision. Whilst more or better evidence may have raised a rebuttable inference of bad faith, as the Complaint was presented, the Panel is unable to draw the finding that it is more likely than not that the domain name was registered in bad faith.

Consideration of use in bad faith becomes unnecessary. The Panel finds that Complainant has failed to satisfy the third and final element of the Policy.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the gdot.com domain name REMAIN WITH Respondent.

Debrett G. Lyons, Panelist

Dated: April 5, 2025

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