UDRP has been denied.
Imagine being challenged about your own last name, as in the case of Mr. Joseph Golio.
He registered the domain name Golio.com in 2000, and 18 years later a corporate entity attempted to wrestle it away via the UDRP process.
The Complainant, Stephen L. Tucker, asserted rights to the GOLIO mark, registered in 2016 with the USPTO. The mark is about services for booking hotel accommodations and other lodging resources.
In its filing, the Complainant claimed that the Respondent “abandoned all rights” to the domain, by not using it actively; that’s the Respondent’s own family name!
John J. Upchurch, sole panelist at the National Arbitration Forum, found no such bad faith registration or use, and ordered the domain to remain with the Respondent.
Full details of this decision follow:
DECISION
Stephen L. Tucker v. Joseph Golio
Claim Number: FA1807001796141
PARTIES
Complainant is Stephen L. Tucker (“Complainant”), represented by Thomas L. Peterson of Brundidge & Stanger P.C., Virginia, USA. Respondent is Joseph Golio (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <golio.com>, registered with Register.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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 11, 2018; the Forum received payment on July 11, 2018.
On July 11, 2018, Register.com, Inc. confirmed by e-mail to the Forum that the <golio.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2018 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@golio.com. Also on July 11, 2018, 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.
A timely Response was received and determined to be complete on July 12, 2018. A timely Reply to the Response was received July 17, 2018.
On July 16, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant:
1. Complainant engages in the business of providing online promotional materials in relation to travel, such as services for booking hotel accommodations and other lodging resources. Complainant has rights in the GOLIO mark through its registration application for the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Ser. No. 87/056,700, issued Dec. 20, 2016). See Compl. Ex. A. Complainant, thus, has common law rights in the mark. Further, Respondent’s <golio.com> domain name is identical to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the <golio.com> domain name. Respondent has abandoned its ownership of the domain name given the fifteen years in which it has failed to make any use of the domain name. See Compl. Ex. C.
3. Respondent registered and uses the <golio.com> domain name in bad faith. Respondent has failed to use the domain name for any purpose for fifteen years, indicative of its registration of the domain name for the sole purpose of selling it to a third-party. See Compl. Ex. C.
B. Respondent:
1. Respondent makes no contentions regarding the first prong of the Policy.
2. The term “Golio” represented in the <golio.com> domain name is Respondent’s family name, which it registered in March of 2000, well before Complainant filed for its trademark application. Respondent intended to use the domain name for family photos, post information about the family, use it for a potential future business, or allow for another family member to use the domain name.
3. Respondent does have rights and legitimate interests in the <golio.com> domain name. Respondent did not register the domain name in bad faith. Respondent has never offered it for sale, and did not register the domain name to prevent another entity from registering the domain name. Rather, Respondent registered the domain name to use in the future as part of a potential family business, or to post information about the Golio family, and registered the domain name well prior to Complainant filing for rights in the GOLIO mark.
FINDINGS
1. Respondent does have rights or legitimate interests in the <golio.com> domain name.
2. Complainant has not established rights in the mark for purposes of Policy ¶ 4(a)(i).
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.
Identical and/or Confusingly Similar
Complainant argues that Respondent’s <golio.com> domain name is identical to Complainant’s mark. The presence of a generic top-level domain (“gTLD”) to a complainant’s mark does not sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). As such, the Panel finds that the <golio.com> domain name is identical to the GOLIO mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
Respondent does have rights and legitimate interests in the domain name, as the term “Golio” reflected in the <golio.com> domain name is Respondent’s family name. A respondent can be found to be commonly known by a domain name where it reflects a personal name. See G.A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that a person who registers a variant of their full name has rights and legitimate interests in the domain name); see also G. A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that the respondent had rights and legitimate interests in the <armani.com> domain name, where the domain name reflects the initials of the respondent’s first and middle name, combined with its entire last name). The Panel notes that Respondent signed the Response with the name “Joseph J. Golio,” and the WHOIS information of record lists the registrant as “Joseph Golio.” Accordingly, the Panel finds that the domain name reflects Respondent’s personal name, and holds that Respondent is commonly known by the domain name under Policy ¶ 4(c)(ii).
Next, Respondent claims that it registered the domain name well prior to Complainant filing for a trademark registration of the GOLIO mark. A respondent may have rights and legitimate interests in a domain name where its acquisition of the domain name predates a complainant’s rights in a mark. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (“As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name.”); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had not met its burden of proof to show respondent lacked rights or legitimate interests in a domain name when respondent’s registration of that domain name occurred before the complainant had established rights in its alleged mark). Respondent registered the domain name at-issue in March of 2000, whereas Complainant filed for its trademark in December 2016. See Resp. pg. 2; see also Compl. Ex. A. As such, the Panel holds that Respondent’s acquisition of the domain name predates Complainant’s rights in the GOLIO mark, conferring rights and legitimate interests in the domain name to Respondent for the purposes of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark. Accordingly, the Panel declines to analyze the remaining element of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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 <golio.com> domain name remain with Respondent.
John J. Upchurch, Panelist
Dated: July 27, 2018
Whats with these “not using actively” ridiculous allegations? Domain does NOT have to be a website. It can serve for email or a number of protocols other than http(s), it can be app responding only to certain IPs or user-agents etc. As long as there is no illegal activity, the owner does not have to report to anyone what he is doing or not doing with it.
Hope there is a special hell for these reverse hijackers, where devils slowly tear parts off their bodies muttering “you’re not using it actively”.
What a joke. There should be financial penalties if you make a complaint like this and loose.