Well last week domain holders got 2 nice WIPO decisions but as we all know how inconsistent these decisions can be.
Today come’s a sole panelist decision awarding a Generic domain name to a company that doesn’t even hold a trademark.
Here are the relevant facts as laid out by the panel:
The Complainant is a company concerned with the selling of shower and bathroom faucets, much of which business is conducted over the Internet through its website “www.ergonomicdesigns.co.uk”.
The Company’s registered name is “Ergonomic Designs Limited” and the brand name “Ergonomic Designs” is used by the Complainant but is not a registered trademark.
The Respondent is a company called “Stylish Solutions Limited”, retailing shower and bathroom faucets, which does some of its business through the website “www.stylishsolutions.co.uk”.
The disputed domain name <ergonomicdesigns.com> appears to have been acquired by the Respondent in September 2009.
“The Respondent objects that the words “Ergonomic Designs” are generic and cannot be trademarked.
“They are applicable to other items such as furniture. The EPSRC (Engineering and Physical Sciences Research Council) website has a page, produced in evidence in the Response, entitled “the best ergonomic designs on display at Design Museum”.
“The question is whether, on the specific facts of this case, the Complainant by its use of the words “Ergonomic Designs” in trade, has acquired sufficient rights in them.”
“Having regard to all the evidence including, but not limited to, the Complainant’s registered company name and its history and mode of trade, the Panel finds on the balance of probabilities that in this case, and for the purposes of the Policy, the Complainant has sufficient rights in the unregistered trademark ERGONOMIC DESIGNS to satisfy the relevant requirement of paragraph 4(a)(i) of the Policy.”
“The disputed domain name was acquired by the Respondent in September 2009, some two years after Ergonomic Designs Limited was registered as a company”.
In this case the trademark ERGONOMIC DESIGNS is not a registered trademark and the Complainant asserts common law rights
“It is clear from the evidence that the Respondent knew of the Complainant and that the disputed domain name comprised the Complainant’s company name and de facto trademark.”
However it is interesting to note that they domain was not activated since it was acquired by the domain holder.
Despite non-use of the domain:
The Panel still found:
“its inescapable that the Respondent acquired and registered the disputed domain name with the intention ultimately of causing some sort of disruption to the business of the Complainant.”
“The fact that the disputed domain name has not been used in the accepted sense for an Internet presence does not prevent a finding of use in bad faith”.
“The Panel finds that the content of the email of November 11, 2009 to the Complainant, in which the Respondent used the phrases “use one of my other domain names “www.ergonomicdesigns.com” and “I am sure I could drive a lot of traffic to my site”, in the context of all the evidence, is sufficient to constitute use of the disputed domain name in bad faith.”
“An email from the Respondent to the Complainant on January 5, 2010 said: “Do you want to buy “www.ergonomicdesigns.com” for £10,000?” In the context of the various emails exchanged between the Parties, produced in evidence, and the history of relations between the Parties, it may reasonably be concluded that the offer was not a friendly one. ”
The panel ordered the domain transferred.
So lets review.
The complaintant did not hold any trademark on the term.
The term is completely generic.
Matter of fact the domain holder stated:
“That the words “Ergonomic Designs” cannot be the subject of a trademark because they describe goods or services and do not serve to identify a particular brand. The words are widely used in connection with office furniture and the science of furniture and workplace design. Screenprints of relevant websites by Wikipedia and the Engineering and Physical Sciences Research Council (EPSRC) are produced in evidence.”
“The Respondent refutes the Complainant’s claim that the words “Ergonomic Designs” have acquired secondary meaning in a trademark, and maintains that the term is wholly descriptive.”
Yet the panel found the complainant to have a “de facto trademark” based on its use of this generic term for all of 3 years.