WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Ridge Wallet LLC v. WhoisGuard, Inc. / Joel Popoff, Armour Supply Co
Case No. D2019-1324
1. The Parties
Complainant is The Ridge Wallet LLC, United States of America (“United States”), represented by SoCal IP Law Group LLP, United States.
Respondent is WhoisGuard, Inc., Panama / Joel Popoff, Armour Supply Co, Canada.
2. The Domain Name and Registrar
The disputed domain name <theridgewallets.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2019. On June 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 14, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 19, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2019. On June 27, 2019, the Center received an email communication from Respondent, in response to which the Center sent an email communication to the Parties on June 28, 2019, inviting them to explore settlement negotiations. On June 28, 2019, the Center received a further email communication from Respondent. Complainant sent an email communication to the Center on July 8, 2019, indicating its preference to continue the proceeding. On July 9 and 10, 2019, the Center received three email communications from Complainant and Respondent in which the Parties agreed to suspend the proceeding. The proceeding was then suspended on July 11, 2019. The proceeding was reinstituted at the request of Complainant on July 12, 2019, and the Response due date was August 16, 2019. Respondent did not submit any formal response.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on September 17, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a Californian registered limited liability company, having its headquarters in Los Angeles, California, United States, and carrying on the business of retail Internet sales.
Complainant is the owner of the following United States trade mark registrations:
- number 4,470,705 registered on January 21, 2014, for the mark THE RIDGE covering goods in International Class 018 of “card wallets; pocket wallets”;
- number 5,001,780 for the mark registered on July 19, 2016 and covering goods in International Class 018 of “card wallets; pocket wallets”; and
- pending number 88214574 for the mark RIDGE covering goods in International Class 018 of “Bags; backpacks; duffel bags; key cases; card wallets; pocket wallets, all of the foregoing specifically excluding leather goods”.
Complainant also owns the RIDGE and RIDGE-formative marks in various other jurisdictions including Canada, China, the European Union, Japan, Mexico, and the United Kingdom. (Collectively referred to as “Complainant’s Marks”.)
Complainant has operated its business using Complainant’s Marks in connection with wallets since at least 2013.
Complainant’s primary web page “www.ridgewallet.com” was launched in February 2013, and Complainant has been using this domain in conjunction with Complainant’s Marks since then.
According to the publicly available WhoIs the Domain Name was registered on April 9, 2019. The Domain Name has been used to resolve to the website of a competitor of Complainant’s, where products similar to those of Complainant are offered for sale.
5. Parties’ Contentions
Complainant states that Respondent registered the Domain Name more than six years after Complainant registered the domain name <ridgewallet.com>, and after registration of two of Complainant’s Marks.
Complainant asserts that the Domain Name redirects to another website, being “www.armoursupplyco.com”. This website sells a competing product to that of Complainant. Complainant further asserts that the Twitter account associated with the “www.armoursupplyco.com” web page indicates that Respondent began business in 2018.
Complainant contends that the products available on Respondent’s website appear to be intentionally designed to copy and confuse consumers as to the similarity of the products, as shown below:
The Amour Supply Co. Wallet
The Ridge Wallet
Complainant states that Respondent is intentionally utilizing Complainant’s Marks in connection with the Domain Name, and is onlyusing the Domain Name to refer traffic to its site, in an attempt to play on the goodwill associated with Complainant’s Marks and the quality of Complainant’s products.
At different times, Respondent has rendered the Domain Name “parked”, although the “title” of the Domain Name is “Armour Supply Co | EDC Wallets & Accessories”.
Complainant contends that as a result, the Domain Name is confusingly similar to Complainant’s Marks. The content available on the web pages hosted at Respondent’s domain name is also confusingly similar to real products sold under Complainant’s Marks.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Name.
After a reasonable search, Complainant states that it is unable to obtain any evidence of use or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services using Complainant’s Marks.
Neither has Complainant been able to find any evidence that Respondent is or has been commonly known by the Domain Name or any variation thereof.
Therefore, Complainant submits that Respondent is not making any legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, and that the Domain Name is misleadingly diverting consumers to tarnish Complainant’s Marks for commercial gain.
The Domain Name implies an affiliation or association with Complainant where there is none.
Complainant submits that Respondent has, therefore, intentionally attempted to attract, for commercial gain, Internet users to the Domain Name purposefully relying upon a likelihood of confusion with Complainant’s Marks that suggest that there is some association with Complainant or to otherwise redirect seekers of Complainant’s products to Respondent’s products.
Complainant goes on to state that Respondent’s use of Complainant’s Marks in the Domain Name creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. Specifically, Respondent’s initial use of Complainant’s Marks, followed by readily available products that are virtually identical in appearance to authentic products on the site to which one is redirected after inputting the “theridgewallets.com” website address reinforces the confusion once a visitor has viewed the site. Respondent further engenders confusion by copying the physical designs of the associated products in almost every way. Respondent then profits from the use of Complainant’s Marks through the receipt of revenue from sales of its competing products.
Finally, it is submitted that this use of Complainant’s Marks to confuse potential customers in order to generate commercial gain demonstrates bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant is the registered proprietor of a range of RIDGE and RIDGE-formative trade marks in various jurisdictions including the United States, Canada, China, the European Union, Japan, Mexico, and the United Kingdom, referred to in this decision as “Complainant’s Marks” and has been using Complainant’s Marks in connection with the sale of card and pocket wallets since at least 2013.
The Domain Name consists of two elements, being Complainant’s THE RIDGE mark in its entirety, with the term "wallets". The addition of "wallets" does not negate any possible confusing similarity. Where the relevant trademark is recognizable within the Domain Name, the addition of other terms would not prevent a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). In this case, the dominant feature of Complainant’s Marks (i.e. “RIDGE”) is clearly recognizable in the Domain Name.
Respondent has failed to explain why it chose the Domain Name or to challenge or refute the allegations made by Complainant. In the absence of such response, and for the reasons set out above, it is found that:
a) Complainant has rights in respect of Complainant’s Marks.
b) The Domain Name is confusingly similar to Complainant’s Marks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
In terms of whether Respondent has rights or legitimate interests in the Domain Name, in the absence of any response or explanation, the Panel finds no apparent basis for Respondent to be able to assert that it has rights or legitimate interests in the Domain Name. It appears that Respondent is not sponsored by or affiliated with Complainant, nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Marks.
Instead, Complainant asserts that the Domain Name redirects to another website, being “www.armoursupplyco.com”, which website sells a competing product to that of Complainant. Further, Complainant asserts that the products available on this website appear to be intentionally designed to confuse consumers as to the similarity of the products. In this regard, reference is made to the images above. These assertions have merit and the Panel infers that the Domain Name is being used for monetization purposes.
Based on the above, the Panel is therefore satisfied that the second element of the Policy has been met.
C. Registered or Used in Bad Faith
Given Complainant’s use and registration of Complainant’s Marks, and its prior business activities in relation to card and pocket wallets, the Panel infers that Respondent knew of Complainant’s Marks when registering the Domain Name.
The Panel finds that Respondent registered and is using the Domain Name in bad faith to take advantage of Complainant’s interest in Complainant’s Marks.
The Panel thus finds that the third limb of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <theridgewallets.com> be transferred to Complainant.
Clive L. Elliott Q.C.
Date: October 1, 2019