Ridley, McGreevy, & Winocur, P.C. v William Sears

WIPO Case No. D2025-0230

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ridley, McGreevy, & Winocur, P.C. v. William Sears

Case No. D2025-0230

1. The Parties

The Complainant is Ridley, McGreevy, & Winocur, P.C., United States of America (“United States”), represented by ZwillGen PLLC, United States.

The Respondent is William Sears, United States.

2. The Domain Names and Registrar

The disputed domain names <fredricmwinocur.com> and <fredricwinocur.com> are registered with

NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2025. connection with the disputed domain names. On January 22, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 24, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 13, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 14, 2025.

The Center appointed William F. Hamilton as the sole panelist in this matter on February 17, 2025. 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.

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4. Factual Background

The Complainant is a United States boutique law firm of trial attorneys based in Denver, Colorado. Fredric corporate and individual clients. Mr. Winocur has received many professional recognitions including, but not limited to, mentions in “The Best Lawyers in America,” “Denver’s Top Lawyers,” and “Colorado Super Lawyers.”

The Respondent is a former disgruntled client of the Complainant and Mr. Winocur. The Respondent registered the disputed domain names to host information critical of Mr. Winocur. At some point, the Respondent posted the following on the <fredricwinocur.com> website: “My name is William Sears and

because of this mans (sic) complete and total failure to protect my rights I went to prison.”

The disputed domain names <fredricwinocur.com> and <fredricmwinocur.com> were registered on March

14, 2024, and March 9, 2024, respectively.

Currently, the disputed domain names do not resolve to active pages.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer
of the disputed domain names. The Complainant claims common law trademark rights in the firm name
“Ridley, McGreevy, & Winocur” and in name “Fredric Winocur.”

Notably, the Complainant contends that the disputed domain names are confusingly similar to the law firm’s name and Mr. Winocur’s name, that the Respondent has no rights or legitimate interest in the disputed domain names, and that the Respondent registered the disputed domain names in bad faith to defame and damage the Complainant’s and Mr. Winocur’s reputation causing the Complainant and Mr. Winocur financial and other harms. Neither the Complainant nor Mr. Winocur authorized the use of Mr. Winocur’s personal name by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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The Complainant asserts trademark rights in the law firm name “Ridley, McGreevy, & Winocur, P.C.” However, the Complainant has provided no evidence to support a finding of unregistered trademark rights in its law firm name. While there are questions as to confusing similarity between the disputed domain names and the alleged law firm trademark, the Panel need not make a final determination on this matter noting the findings in the second element.

When the Complainant relies on an unregistered mark, the Complainant must demonstrate that the mark has become a distinctive identifier that consumers associate with the Complainant’s goods and/or services. This can be evidenced by the duration and nature of the mark’s use, the financial investment in promoting the

unregistered mark, as well as media and industry recognition. WIPO Overview 3.0, section 1.3.

WIPO Overview 3.0, section 1.5, states in relevant part:

“Personal names that have been registered as trademarks would provide standing for a complainant to file a UDRP case. The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a

trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or
common law rights in that name for purposes of standing to file a UDRP case where the name in question is

used in commerce as a distinctive identifier of the complainant’s goods or services.”

WIPO Overview 3.0, paragraph 1.3, states in relevant part:

“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must
show that its mark has become a distinctive identifier which consumers associate with the complainant’s
goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as
secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the
amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of
actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”

Whether a person’s name has acquired secondary meaning (and hence may claim protection as a common law trademark) requires a factual determination. Factors that a panel might consider include: (a) whether the name is common (which reduces the possibility of acquiring secondary meaning); (b) whether the name was used in connection with goods or services in a commercial context; and, (c) the time period over which the name was so used. Adam Anschel v. Domains By Proxy, LLC / Tzvi Milshtein, WIPO Case No. D2015-1570.

The Complainant has failed to establish that the FREDRIC WINOCUR mark has acquired a secondary meaning. The Complainant has not presented any evidence in terms of promotion, use, or advertising that substantiates the claim that the FREDRIC WINOCUR mark has attained secondary meaning in any market for legal services. The Complainant has not provided (i) evidence showing that the FREDRIC WINOCUR mark has been consistently used in advertising legal services, (ii) testimonials or surveys indicating that potential clients identify or recognize Mr. Winocur, (iii) regular blogs, columns, interviews, or commentary featuring Mr. Winocur in public-facing media, (iv) public facing presentations by Mr. Winocur, or (v) books, articles, or guides authored by Mr. Winocur aimed at the public. WIPO Overview 3.0, section 1.3.

Mr. Winocur’s professional honors attest to his admirable skills, but they do not establish that FREDRIC
WINOCUR has attained secondary meaning in any client market for legal services. WIPO Overview 3.0,
section 1.3; Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540 (“A mark comprising
a personal name has acquired secondary meaning if a substantial segment of the public understand the
designation, when used in connection with services or a business, not as a personal name, but as referring
to a particular source or organization.”; Gregg M. Mashberg v. Crystal Cox, WIPO Case No. D2011-0677
(complaint denied for lack of sufficient evidence for establishing common law trademark rights in the
complainant’s personal name even though the disputed domain name was identical to the complainant’s
name).

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Accordingly, the Panel finds that the Complainant has not established rights in the law firm name. The Panel
finds that the Complainant has not established that the Complainant has any rights in the mark FREDRIC

WINOCUR or that the FREDRIC WINOCUR mark has attained a secondary meaning.

The Panel finds that the Complainant has failed to establish the first element of the Policy.

B. Rights or Legitimate Interests

Although it is not necessary after finding the Complainant has not met its burden under paragraph 4(a)(i) of
the Policy, the Panel will address whether the Complainant has met its burden under paragraph 4(a)(ii) of the
Policy.

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in a domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or 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) that the respondent has been commonly known by the domain name, even if it 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.

The Complaint establishes that disputed domain names were registered to host websites critical of Mr. Winocur’s legal services provided to the Respondent. The Respondent is not shown to have made any offers to sell the disputed domain names for profit or to use the disputed domain names for any commercial

or financial purpose or gain. The Complainant simply asserts that the Respondent’s sole purpose for
registering and using the disputed domain names is to defame Mr. Winocur, damage his reputation, and
financially harm the Complainant. The Complainant has not presented any evidence that the Respondent’s
criticism of Mr. Winocur is not genuine or a pretext for commercial activity. Paul Clote a/k/a Paul David Clote
and Paul D. Clote v. Domains By Proxy, LLC / Clote Nomore, WIPO Case No. D2019-3002.

In principle a respondent’s fair use, such as noncommercial free speech, would support a claim to a rights or legitimate interests under the Policy. The Respondent has directed the disputed domain names to websites criticizing Mr. Winocur. The Panel finds no evidence that the Respondent is trying to divert business from

the Complainant for financial motives. The Complainant and Mr. Winocur may have potential claims against the Respondent that could be brought in United States federal or state courts. However, the Complainant’s substantive claims of defamation are not appropriate subjects for a UDRP proceeding under the
circumstances of this case.

The Respondent registered the disputed domain names to host a criticism website targeting Mr. Winocur. In this regard, the Panel notes that this is an unusual criticism situation as the Complainant, a law firm, has filed the Complaint in relation to criticism targeting the individual Mr. Winocur, rather than the law firm generally.

As such, this case does not fall into the category of cases involving criticism of a trademark holder on an identical disputed domain name. Moreover, as discussed in the preceding section, the Panel notes that the Complainant has failed to establish trademark rights in the personal name of Mr. Winocur. WIPO Overview 3.0, section 2.6; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. The Complainant’s allegations of defamation fall outside the scope of the UDRP, and such claims must be resolved in other forums.

The Panel finds that the Complainant has failed to establish the second element of the Policy.

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C. Registered and Used in Bad Faith

There is no evidence that the Respondent registered the domains for financial gain or commercial misuse. names for criticism, the current parking of the disputed domain names does not establish bad faith.

Given the findings above, the Complainant has not established bad faith under the Policy. Sermo, Inc. v.

The Panel finds that the Complainant has failed to establish the third element of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

/William F. Hamilton/
William F. Hamilton
Sole Panelist
Date: March 3, 2025