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October 14, 2010 / Nate Harris

Ergonomic Designs Limited v. Paul Moore, Stylish Solutions Limited

Summary of Ergonomic Designs Limited v. Paul Moore, Stylish Solutions Limited
(WIPO Case No. D2010-1344)

Filed: August 9, 2010; Decided: September 24, 2010 (Panelist: Dr. Clive N.A. Trotman)

Disputed domain name: <ergonomicdesigns.com>

 

ergonomicdesigns.com

 

The Parties

Since its formation in 2007, Complainant Ergonomic Designs Limited (“EDL”) has sold shower and bathroom faucets over the internet on its website at <ergonomicdesigns.co.uk>. The British company is registered under the name “Ergonomic Designs Limited,” but owns no trademark registration on its name or any variants.

Respondents Stylish Solutions Limited and Paul Moore are also British purveyors of shower and bathroom faucets, and do most of their business through their website <stylishsolutions.co.uk>. Respondents acquired the disputed domain name in September 2009, and claim to have put on hold plans to expand into the business of selling ergonomically-designed furniture.

The parties’ history is a rancorous one, with Repondents at one point threatening to use the disputed domain to drive traffic to its site. Respondents also offered to sell the disputed domain to EDL for £10,000. However, the disputed domain has never been used by the Respondents.

Procedural

EDL filed a supplemental submission, which was protested by the Respondents. [I’m starting to get the impression these guys don’t like each other.] In the Panel’s view, the supplemental submission “essentially reiterates the complaint,” and “adds nothing that could not have been included the first time.” Accordingly, the Supplemental Filing is not admitted.

Identical or Confusingly Similar

EDL argues that its sales volume and popular website give it rights in the mark ERGONOMIC DESIGNS. Respondents contend that the phrase is generic and “cannot be trademarked.” [If John Welch of the TTABlog were dead, he’d be spinning in his grave over this use of “trademark” as a verb.] According to the Panelist:

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 (emphasis added).

The Panel finds that the disputed domain is identical or confusingly similar to the ERGONOMIC DESIGNS mark.

Rights or Legitimate Interests

The Panel notes that the Respondents’ only evidence of their plan to sell “ergonomically-designed furniture”  is a letter that post-dates the complaint. Furthermore, there is no evidence Respondents are known by “Ergonomic Designs,” nor that they are making a legitimate non-commercial or fair use of it. Respondents’ threat to use the disputed domain to divert traffic from EDL’s site confirms the Respondents’ lack of rights or legitimate interests in the mark.

Bad Faith

The disputed domain name was registered in 2009, two years after EDL began using its mark and well after the parties became aware of one another.  The animosity between the parties contributes to the Panel’s finding that it is “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.”

As for bad faith use, the Panel notes that non-use of a domain couple with other ingredients of bad faith may constitute bad faith use.  Here, the threat to divert traffic along with the offer to sell at an exorbitant price constitute a “bad faith use.”

Decision

The Panel orders that the disputed domain name be transferred to the Complainant.

Commentary

I think ERGONOMIC DESIGNS is generic for EDL’s products. As such, it cannot be a trademark. The concept of secondary meaning is irrelevant. Furthermore, adding “Limited” or “Ltd.” to a generic phrase cannot transform the phrase into a trademark. In  Goodyear’s India Rubber Glove Mfg. Co. v. Rubber Co., 128 U.S. 598 (1888), the Supreme Court addressed a similar situation:

Names which are thus descriptive of a class of goods cannot be exclusively appropriated by any one. The addition of the word “Company” only indicates that parties have formed an association or partnership to deal in such goods, either to produce or to sell them. . . . Names of such articles cannot be adopted as trade-marks, and be thereby appropriated to the exclusive right of any one; nor will the incorporation of a company in the name of an article of commerce, without other specification, create any exclusive right to the use of the name.

The Respondents’ supposed lack of rights and bad faith, though compelling here, are irrelevant if the complainant has no rights in the mark, which I would argue is the case.

Epilogue

As can be seen above, <ergonomicdesigns.com> points to a placeholder site. According to the WHOIS information, the disputed domain has not been transferred.

UPDATE:

Looks like the folks at thedomains.com agree with me (or, since they posted first, I agree with them): ERGONOMIC DESIGNS is generic.

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