Ridgeline Law Office, Inc. v. Jesse Froehling / Ridgeline Law Group, PLLC
Claim Number: FA2001001880161
Complainant is Ridgeline Law Office, Inc. (“Complainant”), represented by Christopher Jaap of Ridgeline Law Office, Inc., USA. Respondent is Jesse Froehling / Ridgeline Law Group, PLLC (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ridgelinelaw.com>, registered with GoDaddy.com, LLC.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on January 22, 2020; the Forum received payment on January 22, 2020.
On January 23, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ridgelinelaw.com> domain name (the 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 January 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 17, 2020 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@ridgelinelaw.com. Also on January 23, 2020, 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 February 17, 2020.
On February 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Non-UDRP Legal Arguments
The Parties argue various legal points of substantive trademark law as they may apply in judicial proceedings. This dispute is governed by the UDRP and not substantive trademark law. While Policy ¶ 4(k) allows the parties to litigate these points in court, they are not applicable in this UDRP administrative proceeding. Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else). The Panel’s analysis is conducted under the UDRP. It is not required to address arguments made by either party based upon substantive trademark law.
A. Complainant
Complainant is a law firm offering a wide range of legal services. Complainant has rights in the RIDGELINE mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,816,779) and the RIDGELINE Design Mark (Reg. No. 5,816,780), both registered July 30, 2019 based upon applications filed March 1, 2018. Additionally, Complainant has common law rights in the RIDGELINE mark since at least 2017. Respondent’s <ridgelinelaw.com> Domain Name is confusingly similar to Complainant’s RIDGELINE mark as it incorporates that mark in its entirety, merely adding the descriptive word “law.”
Respondent has no rights or legitimate interests in the Domain Name. Complainant has rights in the RIDGELINE mark through its registration of that mark with the USPTO and its use of the mark in commerce. Respondent acquired the Domain Name well after Complainant’s first use of the RIDGELINE mark in commerce. Complainant has not authorized Respondent to use the RIDGELINE mark and Respondent is not affiliated, connected, or associated with Complainant. Respondent’s use of the Domain Name is likely to cause confusion, mistake, or deception as to affiliation, connection, or association with Complainant.
Respondent registered and uses the Domain Name in bad faith. Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site or other online location by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, endorsement or affiliation of Respondent’s web site. Also, Respondent attempted to sell the Domain Name to Complainant for an amount in excess of out-of-pocket costs. Respondent is attempting to pass off as Complainant, and Respondent had actual or constructive knowledge of Complainant’s rights in the RIDGELINE mark when it acquired the Domain Name.
Respondent
Respondent is a personal-injury and civil-rights law firm located in Tacoma, Washington. Respondent’s <ridgelinelaw.com> Domain Name is not confusingly similar to Complainant’s marks as Respondent and Complainant work in different areas of the law and in different geographic areas, and Complainant’s RIDGELINE mark is generic.
Respondent has rights and legitimate interest in the Domain Name. Respondent is not competing with Complainant. Respondent had no knowledge of Complainant or its marks when it organized in July 2018 and acquired the Domain Name. It selected its corporate name, Ridgeline Law Group, PLLC, solely because it decided that the name was suitable to its practice, after conducting USPTO and Google searches for the name “Ridgeline,” neither of which returned anything suggesting law services. It began at that time to use the Domain Name to promote its noncompeting law practice. It did not develop a web site resolving from the Domain Name because its business intake was more than sufficient without one. It used the Domain Name instead for the firm’s email address and as user names for the firm’s court-filing systems, banking and accounting programs, list-serve registrations and the like. It did not learn of Complainant until November of 2018 when Complainant contacted it about the Domain Name.
Respondent had no knowledge of Complainant at the time it acquired the Domain Name and searched before choosing a business name and acquiring the Domain Name. Respondent offered the Domain Name to Complainant for $25,000 because that is what it believed it would cost for Respondent to rebrand.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(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.
The Panel finds as follows with respect to the matters at issue in this proceeding:
The RIDGELINE mark and the corresponding RIDGELINE Design Mark were registered to Complainant with the USPTO (Reg. Nos. 5,816,779 and 5,816,780 respectively) on July 30, 2019 (Complaint Annexes 1 and 2). Complainant’s registration of its marks with the USPTO are sufficient to demonstrate its rights in those marks for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <ridgelinelaw.com> Domain Name is confusingly similar to Complainant’s RIDGELINE mark as it incorporates that mark in its entirety, merely adding the descriptive word “law” and the “.com” generic top-level domain (“gTLD”). These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”), MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
Respondent lists a number of factors federal courts have used to determine the likelihood of confusion between two marks. It contends that the “ridgeline” dominant element of the Domain Name is a common and generic or descriptive term and as such cannot be found to be identical or confusingly similar to Complainant’s mark. It further argues that it is not aware of any actual confusion that has occurred, given the fact that Complaint and Respondent practice in different fields of the law and in different geographic areas. These arguments may be germane in a trademark dispute conducted under federal law, but the Policy ¶ 4(a)(i) analysis is essentially a standing issue and is more limited in scope. Project Management Institute v. CMN.com, Case No. D2013-2035 (WIPO February 13, 2013) (“. . . the first element of the Policy serves essentially as a standing requirement. The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.”), Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the RIDGELINE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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 asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant began using and acquired its rights in the RIDGELINE mark well before Respondent acquired the Domain Name, and (ii) Complainant has not authorized Respondent to use its mark, nor is Respondent affiliated, connected, or associated with Complainant. These allegations are addressed as follows:
Complainant states that it has never licensed or authorized Respondent to use its mark in any way, and that Respondent is not connected, associated or affiliated with it. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant also asserts that because it began using and acquired its trademark rights in its RIDGELINE mark well before Respondent acquired the Domain Name, Respondent cannot be said to have any rights or legitimate interests in the Domain Name. Here again, this argument may have validity under federal trademark law but the rights or legitimate interests analysis framed by the Policy looks to the factors listed above, and Complainant did not address any of them. The web site resolving from the Domain Name is not yet active, so Respondent is plainly not using it for a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Complainant, however, offered neither argument nor evidence relevant to the provisions of Policy ¶¶ 4(c)(i) or (Iii). Inasmuch as a respondent may demonstrate rights or legitimate interests in a domain name under either of those paragraphs, Complainant’s failure to address them must be taken as a failure to establish a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. Complainant has proven that it did not authorize Respondent to use its mark and that Respondent is not affiliated, connected or associated with it. As discussed above, that has often been held to indicate a lack of rights or legitimate interests in a domain name when accompanied by evidence that the respondent is not commonly known by the domain name but standing alone it is not sufficient to carry the burden. In order to establish a prima facie case of no rights or legitimate interests, a complainant must necessarily address all three circumstances articulated by Policy ¶ 4(c). 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)). Complainant has failed to do so.
The Panel notes that, even if Complainant had established a prima facie case of no rights or legitimate interests, Respondent demonstrated by uncontroverted evidence that before any notice to it of a dispute involving the Domain Name it began using it in connection with a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i). Its principal, Jesse Froehling, organized his professional limited liability company, the Respondent, on July 18, 2018 (Complaint Annex 8). Respondent acquired the Domain Name on August 15, 2018 (Complaint Annex 9), and began using it for the firm’s email address, as shown on the bar registration reports for the states of Washington, Arizona and Montana submitted as Respondent Annexes 3, 4 and 5. The fact that it does not yet have an active web site resolving from the Doman Name does not abrogate or diminish in any way the fact that it was and is using the Domain Name for an email address to operate its business. The Declarations of Mr. Froehling and two other individuals who were involved in the organization and branding of Respondent in July 2018, submitted as Respondent Annexes 1, 15 and 16, all state that at that time searches were conducted for the name “Ridgeline” and that while many uses of that name were disclosed none of them suggested law firms or legal services. Respondent states that it first learned of Complainant and its mark when Complainant contacted it in November 2018 with a cease-and-desist demand. This evidence is not disputed and there is nothing in the record to suggest that the statements of these individuals are not true. Respondent has demonstrated that it fits squarely within the circumstances articulated in Policy ¶ 4(c)(i) and therefore has rights and legitimate interests in the Domain Name. JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Since the Panel concluded that Respondent has rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), it need not analyze the bad faith element addressed in Policy ¶ 4(a)(iii). Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name), Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith). The Panel elects not to analyze the Policy ¶ 4(a)(iii) element.
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ridgelinelaw.com> domain name REMAIN WITH Respondent.
Charles A. Kuechenmeister, Panelist
Dated: February 27, 2020
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