Complainants are Ruff Roofers, Inc., Ruff Roofing, Inc. and Roofing by Ruff, Inc. all of Baltimore, Maryland, United States of America ("US"), represented by Pessin Katz Law, US.
Respondent is Jean Ruff of Halethorpe, Maryland, US, represented by Kollman & Saucier, P.A., US. 2. The Domain Names and Registrars
The disputed domain name is registered with 1&1 Internet AG, and is registered with GoD, LLC. The two domain names are collectively referred to as the "Domain Names". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2014. On October 8, 2014, the Center transmitted by e-mail to the respective registrars requests for registrar verification in connection with the Domain Names. On October 8 and 15, 2014, the registrars transmitted by e-mail to the Center their verification responses confirming Respondent as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on October 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2014. The Response was filed with the Center on November 10, 2014.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 19, 2014. 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
This case arises out of an intra-familial dispute that seems to go back for many years. The two sons of a father who had owned and operated a roofing company in Maryland for decades (after his own father had done so) both decided to continue pursuing separate roofing businesses in the comparatively small state of Maryland. Both sons continued to use the family surname Ruff in their respective businesses. Both sons availed themselves of the Internet in furtherance of their business ends. Predictably enough, these two Maryland-based roofing businesses, run by members of the Ruff family, are now fighting over domain names which contain the family name Ruff and make reference to the business of roofing.
The two Domain Names in dispute are , registered on June 20, 2001, and , registered on July 19, 2006. Respondent Jean Ruff is the registrant for both Domain Names. Jean Ruff is the wife of Ronald W. Ruff ("Ron"), the owner of Ron Ruff Roofing, Inc.
Complainants collectively are three entities incorporated in the state of Maryland, each with the same street address in Baltimore. Ruff Roofers, Inc. was registered with the state on February 9, 1996, Roofing by Ruff, Inc. was registered on October 13, 1998, and Ruff Roofing, Inc. was registered on October 13, 2006. Complainants bring this Complaint collectively as they claim to have a "common grievance" against Respondent.
Complainant Ruff Roofing, Inc. holds a service mark for ROOFING BY RUFF, registered with the United States Patent & Trademark Office ("USPTO") on December 24, 2013. The registration, which applies to roofing consultation, roofing contracting, roofing installation, roofing repair, and roofing services, indicates a first use in commerce of "0-0-1939."
Complainant Ruff Roofers, Inc. holds a service mark for RUFF ROOFERS, registered with the USPTO on July 21, 2009. The registration, which applies to roofing consultation, roofing contracting, roofing installation, roofing repair, and roofing services, indicates a first use in commerce of "12-31-1982."
Annexed to the Complaint is an Affidavit of Marilyn Jane Ruff ("Marilyn"), who, after declaring herself to be of sound mind, states that her husband Charles F. Ruff ("Charles") "owned and operated a Maryland roofing company using the trade names Roofing by Ruff, Ruff Roofing, & Ruff Roofers at least as early as December 31, 1982." Charles' roofing company was actually incorporated as Charles F. Ruff and Co., Inc. in 1963. Marilyn further states that this roofing business has operated at the current address of Complainants since 1961.
Marilyn also asserts in her affidavit that, back in 1981, Charles placed a quarter-page advertisement in the West Baltimore Yellow Pages which "featured the trade name 'Ruff Roofers' prominently," and which "also used the trademarks 'Roofing by Ruff' and 'the standard by which others are judged."
Charles retired from the roofing business in 1995. According to Marilyn's affidavit, their son Timothy Ruff ("Timothy") created a Maryland corporation called Ruff Roofers, Inc. in February 1996. It is alleged that Timothy purchased the trade names Ruff Roofers, Ruff Roofing, and Roofing by Ruff, as well as the real estate where Charles had run his company, and the office furniture and roofing equipment of Charles' business. Marilyn states in her affidavit that, "operationally, Ruff Roofers, Inc. was the successor to Charles F. Ruff and Co., Inc.," and that Timothy's company "continued to use the trademark Ruff Roofers."
Marilyn's affidavit also states that Timothy's company (i.e., Complainant) used "additional trademarks and tradenames" including "Roofing by Ruff" (since 1998) and "Ruff Roofing" (since 2006). No evidence of such use is submitted in conjunction with the Complaint.
Finally, Marilyn's affidavit states, with respect to her "other son" Ron Ruff ("Ron"):
"Ron Ruff has never had any financial or ownership interest in Ruff Roofers, Inc., and does not now have, nor has he ever had, permission to use for his own benefit or the benefit of any third party the trademarks Ruff Roofers, Ruff Roofing, or Roofing by Ruff or the trademark 'the standard by which others are judged.' To the extent Ron Ruff used the trademarks Ruff Roofers or 'the standard by which others are judged' as an employee of Charles F. Ruff and Co., Inc., such permission was revoked when Ron Ruff's employment with Charles F. Ruff and Co., Inc. was terminated about 1993."
As noted above, Respondent Jean Ruff is the wife of Ron, who owns Ron Ruff Roofing, Inc., a Maryland corporation founded on April 9, 1996. Respondent, who has been vice president and secretary of Ron Ruff Roofing, Inc. since its formation, swore an affidavit in opposition to the Complaint and in response to the affidavit submitted by Marilyn Jane Ruff, the mother of Timothy and Ron.
Respondent Jean Ruff's affidavit begins with the statement that "Marilyn Jane Ruff [who had begun her affidavit by confirming her "sound mind"] was diagnosed with dementia and Alzheimer's Disease in April 2014."
Respondent's affidavit further disputes Complainant's allegations in several key respects. First, Respondent states that "Charles F. Ruff & Co., Inc.'s corporate charter was forfeited" in October 1995, and that company "formally discontinued its operations in early 1996." Respondent also states in her affidavit that Ron Ruff was the vice president of Charles F. Ruff & Co., Inc. from approximately 1980 until it ceased its operations. (This assertion does not square with the allegation by mother Marilyn that Ron had been "terminated" in "about 1993." Respondent also attached to its Response a tax form for the year 1995 which shows that Ron was still employed by Charles F. Ruff & Co. in 1995.)
Respondent's affidavit states further:
"At the time Charles F. Ruff & Co., Inc. discontinued its operations, Timothy and Ron Ruff reached a handshake agreement to divide the former company's property trade names between themselves. It was agreed that Timothy would use 'Ruff Roofers' and Ron Ruff would use 'Roofing by Ruff.' In addition, Timothy agreed to purchase office furniture, roofing equipment, and real property located at [address of Charles F. Ruff & Co., Inc.]. The parties did not discuss 'Ruff Roofing.'"
According to Respondent's affidavit, Ron Ruff Roofing, Inc. began using the trade name "Roofing by Ruff" as early as 1996, more than two years before Complainant formed the company Roofing by Ruff, Inc. in 1998. This affidavit also asserts that Ron Ruff Roofing, Inc. had used the trade name "Ruff Roofing" extensively since 1996, more than ten years before Complainant formed the company "Ruff Roofing, Inc." Respondent annexed to the complaint various documents from Respondent's vendors and customers which referred to Respondent as "Ruff Roofing."
Finally, Respondent's affidavit asserts that another domain name, , was registered on May 16, 2014 by a person in Centreville, Maryland, and that "earlier this year, Timothy and Rob Ruff, officers of Complainant Ruff Roofers, Inc., called me several times to see whether I was interested in obtaining" that domain name "from them." It is alleged in the Response that the registrant of has the same business address as the company that designed Complainants' website. Respondent asserts that Complainant is using the domain name as "leverage" against Respondent. 5. Parties' Contentions A. Complainant
The salient factual allegations surrounding Complainants' case are reflected above in the Factual background section. Complainants maintain that they have satisfied the requirements of the Policy, and they seek the transfer (or, in the alternative, cancellation) of the Domain Names. B. Respondent
Respondent's main contentions are also reflected in the Factual background section above. Respondent asks the Panel to deny the Complaint and declare that Complainants have engaged in reverse Domain Name Highjacking. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Typically, at this point a panel starts right in with a step-by-step discussion and analysis of each of the foregoing three elements under the Policy, recording the panel's findings and conclusions along the way. This case, though, is different. The facts and assertions reflected above in the factual background section should make it obvious that this is not a case well suited for resolution under the Policy. It has been observed many times that the Policy is designed to address clear cases of cybersquatting, and not disputes where a domain name is caught up in the midst of a larger business dispute with colorable claims on each side. See, e.g., Libro v. NA Global Link Limited,WIPO Case No. D2000-0186 ("The [Policy] is very narrow in scope; it covers only clear cut cases of 'cybersquatting' and 'cyberpiracy'"); The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470 ("To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy").
What we have here is a family feud between brothers (and their respective allies within the family), each of whom chose to carry on the very same type of business as the other, in the same area, each using the shared family name. We have two different versions of events, including factual disagreements over whether one brother was terminated three years before the predecessor company ceased to operate, whether the mother is still competent to offer testimony by affidavit, whether the brothers reached a "handshake agreement" in 1995 over the future use of various trade names, whether brother Timothy's business was truly the successor of their father's business, and so forth. We have pleadings replete with loose terminology, including the casual interchangeable use of the terms "trademarks" and "trade names" as if both were germane to a dispute under the Policy (unlike trademarks, trade names do not give rise to the right to seek a domain name transfer under the Policy). We have what seem to be inexplicable delays by Complainant (the Domain Names at issue were registered in 2001 and 2006, and the Complaint was filed in 2014), and we have what appears to be decidedly unsavory conduct by Complainant in the registration (directly or indirectly) of the domain name earlier this year.
Given the streamlined nature of proceedings under the Policy, where there is no discovery, no live hearing, no cross-examination of witnesses, and so forth, this dispute is a very poor candidate for resolution. Whether one party, or the other, or both, is in bad faith here cannot be determined definitively based solely on the record afforded in this case.
If, however, the Panel were required to reach a determination of each of the three elements under the Policy, the Panel would conclude that Complainant had not proven the three elements required under the Policy, and that the record is not quite developed enough to conclude that Complainant has engaged in Reverse Domain Name Highjacking. In any event, this Complaint should not have been brought. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: December 1, 2014
Full & Egal Universal Law Academy