Bradley T. Goulding v. Geoff Hill / HK
Claim Number: FA1410001585713
Complainant is Bradley T. Goulding (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondent is Geoff Hill / HK (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <bradley-t-goulding.com> and <bradley-goulding.com>, registered with GoDaddy.com, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2014; the National Arbitration Forum received payment on October 20, 2014.
On October 21, 2014 GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bradley-t-goulding.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. On October 23, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the<bradley-goulding.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. GoDaddy.com, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com have verified that Respondent is bound by the respective registration agreements 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 October 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2014 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@bradley-t-goulding.com, postmaster@bradley-goulding.com. Also on October 29, 2014, 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 November 25, 2014, 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.
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.
The Panel has issued 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 any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts common law trademark rights in the personal name, BRADLEY T. GOULDING, and alleges that the disputed domain names are either identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is an American businessman;
2. The disputed domain name <bradley-t-goulding.com> was registered on February 25, 2013 and the <bradley-goulding.com> domain name was registered on September 22, 2014.
3. The domain names resolve to websites which in similar terms are critical of Complainant’s business activities;
4. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Essentially the complaint is brought to limit the publication of material Complainant finds offensive. Complainant alleges that Respondent uses the disputed domain names to publish misstatements of fact about Complainant’s business ventures, including an allegation that Complainant has embezzled money from one of the businesses of which it is a part-owner.
Had these administrative proceedings moved on to paragraph 4(a)(ii) of the Policy and the question of fair use of the domain name, this Panel would have been required to consider the weight of earlier UDRP decisions which have found that a respondent has a right to post criticisms by virtue of free speech rights, but does not have the right to do so using a domain name either identical or confusingly similar to a complainant’s trademark. However for reasons which now follow the Complaint fails at the first limb.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an 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.
There is no question that the domain names are either legally identical or confusingly similar to the name BADLEY T. GOULDING but there are serious concerns as to whether Complainant enjoys trademark rights in the name.
Complainant asserts common law trademark rights in the name as it is entitled to do. Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights and so-called common law trademark rights may accrue through use and reputation (see, for example, SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000)).
The question before Panel is whether Complainant has done enough to prove common law trademark rights and in that regard the protection of personal names as trademarks has been given particular attention by UDRP panelists over the years. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, which can be found at (http://www.wipo.int/amc/en/domains/search/overview2.0/#16) asks at Question 1.6 “Can a complainant show UDRP-relevant rights in a personal name?” In response it is written:
Consensus view: Personal names that have been registered as trademarks are generally protected under the UDRP. While the UDRP does not specifically protect personal names as such, in situations where a personal name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. In order to do so, proof of use of the person's name as a distinctive identifier of goods or services offered under that name would normally be required [see also paragraph 1.7 below]. A trademark-equivalent basis has been found in the common law action of passing-off, which is generally intended to prevent the making of misrepresentations to the public in the context of trade, and which if established may provide grounds for reliance on a personal name for the purpose of the UDRP.
…
However: The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.
Question 1.7 goes on to ask: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” to which it is written:
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. …
Complainant asserts that it uses and has used name BRADLEY T. GOULDING in connection with business in a variety of different areas including catering and conference services, construction, clubs, golf, homeowner associations, hotels and vacation condominiums, manufacturing, marinas, mobile applications, real estate, restaurants, satellite communications and software services.
Complainant claims that it has been using the name for more than thirty years and provides evidence that Complainant himself has featured in newspaper articles, on blogs and other public media over his career. Additionally, Complainant provides evidence of business entity filings containing the name BRADLEY T. GOULDING with the states of Utah and Florida.
Panel notes, firstly, that the “doing business as” name registrations from Utah and Florida might be suggestive of use of the name BRADLEY T. GOULDING in a trade mark sense, but of themselves they do not stand in the place of the requirement for proof of use and reputation. The proof is absent.
Second, the remaining exhibits are concerned with Complainant himself whereas, to repeat the words of the WIPO Overview, “[T]he name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP.” In other words, the evidence goes (some way) to the reputation or skills of Complainant as an individual rather than to proof that the name BRADLEY T. GOULDING serves as a unique trade identifier for specific goods or services, that is, functions as a trademark.
For these reasons Complainant falls short of establishing trademark rights and so fails in its Complaint at the first limb.
No findings required (see, for example, Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) 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 Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) 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)).
No findings required for the same reason.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bradley-t-goulding.com> and <bradley-goulding.com> domain names REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: November 30, 2014
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