DECISION

 

Gelacele, LLC (d/b/a Gelati Celesti Ice Cream) v. Steve Edmonds / Gelati Celesti

Claim Number: FA2603002211097

 

PARTIES

Complainant is Gelacele, LLC (d/b/a Gelati Celesti Ice Cream) ("Complainant"), self-represented by Thomas Rosser of Gelacele, LLC, Virginia, USA. Respondent is Steve Edmonds / Gelati Celesti ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gelaticelesti.com>, registered with GoDaddy.com, LLC.

 

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 18, 2026. Forum received payment on March 18, 2026.

 

On March 19, 2026, GoDaddy.com, LLC confirmed by e-mail to Forum that the <gelaticelesti.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 26, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2026 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@gelaticelesti.com. Also on March 26, 2026, 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 16, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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

Gelati Celesti was founded in 1984 by Peter Edmonds and his father, who opened the first location on West Broad Street in Richmond, Virginia. For over forty years, the business has operated continuously under the GELATI CELESTI name, making it one of Richmond's most established and recognized food service brands. The business was purchased by Steve and Kim Rosser in 2010. Under their ownership, it expanded from a single location to multiple Richmond-area shops including locations in Henrico County at Short Pump and at 8906 West Broad Street. The business is currently led by Tom Rosser, son of Steve and Kim Rosser, as President. Complainant now operates eleven retail locations across Richmond and Hampton Roads, Virginia. Its current website is located at  "www.gelatiicecream.com".

 

The disputed domain name <gelaticelesti.com> was registered on May 27, 2004 — during the period when Peter Edmonds or his associates operated the original Gelati Celesti business. When the business was sold in 2010, the domain was not transferred to the new owners as part of that transaction. It has remained registered to an unknown third party (currently hidden behind GoDaddy's Domains By Proxy privacy service) ever since, with no active business being conducted through it.

 

Complainant holds both common law trademark rights in the GELATI CELESTI mark dating to 1984, and a federal service mark registration (Reg. No. 7,154,414) issued September 5, 2023. Complainant filed a trademark infringement claim with GoDaddy on or about March 2, 2026 (GoDaddy Case No. LEG-186443). GoDaddy's Trademark Claims Department suspended the hosted website the same day. As of the date of this filing, the domain has displayed an HTTP 404 'Not Found' error for over sixteen days, and no counter-notification has been received.

 

The <gelaticelesti.com> domain name is identical to Complainant's GELATI CELESTI mark.

 

Respondent has no rights or legitimate interests in the <gelaticelesti.com> domain name for the following reasons:

 

(i)                      Respondent is operating under a privacy proxy service (Domains By Proxy, LLC) and has not identified itself. The true registrant is unknown to Complainant. Complainant is not aware of any entity other than Complainant that has trademark rights to, or is commonly known by, the name 'Gelati Celesti.'

 

(ii)                      Any legitimate interest the original registrant may have had in the domain name ceased when the Gelati Celesti business was sold in 2010. The current holder of the registration — whoever is concealed behind the privacy proxy — acquired or retained a registration for a mark to which they have no current business, trademark, or legal connection.

 

(iii)                      Respondent is not making a bona fide offering of goods or services under the disputed domain name. As of the date of this Complaint, the domain resolves to an HTTP 404 'Not Found' error page. GoDaddy's Trademark Claims Department suspended the hosted website on March 2, 2026 (GoDaddy Case No. LEG-186443), and no counter-notification has been received in over sixteen days.

 

(iv)                      Respondent is not making legitimate noncommercial or fair use of the domain name. The domain resolves to no content of any kind.

 

(v)                      Respondent received notice of the trademark-based suspension and elected not to file any counter-notification or otherwise respond. This failure to contest the suspension is consistent with a complete absence of any good-faith basis for continued retention of the domain.

 

The second element of Policy paragraph 4(a) is satisfied.

 

The <gelaticelesti.com> domain name was registered and is being used in bad faith. Complainant notes that the domain name was originally registered in May 2004, during the period of the founding owners' operation of the Gelati Celesti business. Complainant does not contend that the original 2004 registration was itself made in bad faith. Rather, Complainant submits that the domain name is currently being used in bad faith — specifically through passive holding by a party with no legitimate connection to the mark — and that such passive holding in these circumstances satisfies the conjunctive requirement of Policy paragraph 4(a)(iii). Panels have consistently held that 'registered and being used' may be satisfied where a domain name was legitimately registered but is subsequently retained and passively held by a party with no legitimate interest. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 3.3.

 

Complainant further submits the following grounds for a finding of bad faith:

 

(i)                      The domain name is a verbatim reproduction of Complainant's GELATI CELESTI mark, which has been in continuous commercial use since 1984 and is a well-known brand in the Richmond, Virginia market. The current holder of the domain has no business, trademark, or other legitimate connection to the name.

 

(ii)                      The current registrant is concealing its identity behind a privacy proxy service. The use of a privacy service to mask the identity of a registrant who has no legitimate interest in the domain, combined with complete inaction following a trademark suspension notice, is consistent with bad faith retention.

 

(iii)                      Respondent's passive holding of the domain — with no active website, no business operations, and no response to the registrar suspension — constitutes bad faith use under well-established UDRP precedent. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (holding that 'passive holding' of an infringing domain constitutes bad faith use under the Policy); see also Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.

 

(iv)                      The domain carries active GoDaddy registry status codes: clientDeleteProhibited, clientRenewProhibited, clientTransferProhibited, and clientUpdateProhibited. These flags, in combination with the domain's complete lack of any legitimate associated business, indicate that Respondent is neither using the domain for a bona fide purpose nor taking steps to relinquish it.

 

(v)                      Respondent's retention of the domain prevents Complainant from using its own registered trademark as its primary .com address — disrupting the legitimate trademark owner's online business presence. This falls within the bad faith pattern contemplated by Policy paragraph 4(b)(ii) and (iv). Complainant currently operates its business at the secondary domain <gelatiicecream.com> precisely because <gelaticelesti.com> — its exact trademark — remains unavailable due to Respondent's conduct.

 

The third element of Policy paragraph 4(a) is satisfied.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has failed to establish all the elements entitling it to relief. 

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.1 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has provided no evidence that it holds common law trademark rights in the GELATI CELESTI mark.

 

Complainant has shown that it has rights in the registered mark GELATI CELESTI, namely USPTO Registration No. 7,154,414, registered on September 5, 2023 for "Ice cream parlors; ice cream shop services in the nature of a restaurant; restaurants and carry-out restaurants; providing of food and drink via a mobile truck", in International Class 43.

 

The Panel finds Respondent's <gelaticelesti.com> domain name to be identical to Complainant's GELATI CELESTI mark, differing merely by the omission of the space between the words. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored under this element. See Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 25, 2000).

 

Complainant has established this element.

 

Rights or Legitimate Interests

In light of the Panel's finding under the third element, it is unnecessary to consider this element.

 

Registration and Use in Bad Faith

Paragraph 4(a)(iii) of the Policy is expressed in the conjunctive: "the domain name has been registered and is being used in bad faith" and Paragraph 4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii), namely:

 

(i)        circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

 

(ii)        you have 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 you have engaged in a pattern of such conduct; or

 

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

 

(iv)                      by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

The <gelaticelesti.com> domain name was registered on May 27, 2004, during the period of the founding owners' operation of the Gelati Celesti business and many years before the registration of Complainant's GELATI CELESTI mark. Complainant expressly states that it does not contend that the original 2004 registration was itself made in bad faith. Instead,  Complainant submits that the domain name is currently being used in bad faith — specifically through passive holding by a party with no legitimate connection to the mark — and that such passive holding in these circumstances satisfies the conjunctive requirement of Policy paragraph 4(a)(iii), citing WIPO Overview 3.0, section 3.3, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (holding that 'passive holding' of an infringing domain constitutes bad faith use under the Policy); and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.

 

Complainant has not provided any evidence as to whether the domain name has ever resolved to an active website. The Panel has conducted a Wayback Machine search which shows that, between October 29, 2004 and June 25, 2025, the domain name resolved to a website promoting Complainant's business under the GELATI CELESTI mark¹. This shows that, having been registered in good faith by one of the founders' team for use in Complainant's business, the domain name continued to be so used following the acquisition of the business by Steve and Kim Rosser in 2010. Whether the registrant was under an obligation to transfer the domain name to the buyers is an issue beyond the scope of the Policy and more appropriately resolved by a court.

 

Bad faith use of the kind identified in paragraph 4(b)(iv) of the Policy is evidence of both bad faith registration and bad faith use but such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. See Passion Group Inc. v. Usearch, Inc., eResolution Case No. AF-0250 (August 10, 2000), followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905 (December 22, 2000). 

 

Here, as noted, Complainant does not contend that the original 2004 registration was itself made in bad faith. There is no evidence before the Panel of any change of registrant of the domain name since 2004. Accordingly, even assuming that Respondent's recent current use of the domain name constitutes passive use and is evidence of bad faith, the Panel is not persuaded that the domain name has been registered in bad faith.

 

As to whether Respondent acted in bad faith by using a privacy protection service to hide its WHOIS registration data, as noted in WIPO Overview 3.1, section 3.6, "there are recognized legitimate uses of privacy and proxy registration services", and the circumstances in which such services are used can however impact a panel's assessment of bad faith. As is widely known, the use of a privacy or proxy registration service is a common practice adopted by many legitimate businesses and individuals to protect against spam, identity theft, and other security risks. Absent additional evidence showing that such privacy was employed specifically to conceal wrongful conduct or to prevent a trademark owner from identifying the registrant, the mere use of a privacy service does not in itself support a finding of bad faith. The Panel is not satisfied that Respondent's use of a privacy service in this case is evidence of bad faith.

 

Complainant has failed to establish this element.

 

DECISION

Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <gelaticelesti.com> domain name REMAIN WITH Respondent.

 

 

 

Alan L. Limbury, Panelist

Dated: April 18, 2026