WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ergonomic Designs Limited v. Paul Moore, Stylish Solutions Limited
Case No. D2010-1344
1. The Parties
The Complainant is Ergonomic Designs Limited of Northampton, United Kingdom of Great Britain and Northern Ireland, internally represented.
The Respondent is Paul Moore, Stylish Solutions Limited of Hull, United Kingdom of Great Britain and Northern Ireland, internally represented.
2. The Domain Name and Registrar
The disputed domain name <ergonomicdesigns.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2010. On August 9, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same date, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 16, 2010. The Center verified that the Complaint and the amendment thereto 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 the Respondent of the Complaint, and the proceedings commenced on August 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2010. The Response was filed with the Center on September 6, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 10, 2010. 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.
The Complainant submitted a proposed reply to the Response in the form of a Supplemental Filing on September 10, 2010. On the same date, the Respondent sent an email communication indicating that it would dispute the content of the Complainant’s Supplemental Filing should the same be considered. The Center acknowledged the receipt of the Parties’ communications and informed them that the Panel would be apprised of the Center’s receipt of such communications, and that it would be in the Panel’s sole discretion to determine whether to consider and/or admit the supplemental filing and subsequent email communication in rendering its decision, and whether to order any further procedural steps.
4. Factual Background
The Complainant and the Respondent appear to have had knowledge of each other in relation to business since 2004.
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.
5. Parties’ Contentions
The Complainant’s contentions include the following.
The Complainant contends that it has rights in the unregistered trademark ERGONOMIC DESIGNS. It is the owner of “Ergonomic Designs Limited” (United Kingdom (UK) Company Number: 6065684), and has used the domain name <ergonomicdesigns.co.uk> since 2007. The brand name of its shower and bathroom faucets business is “Ergonomic Designs”. A device on its website portrays “Ergonomic Designs” and below, “Inspired Bathroom and Kitchen creations”.
The Complainant says it has acquired considerable reputation and goodwill in the use of the trademark ERGONOMIC DESIGNS through reputation, advertising and trade. Money has been spent in advertising and building the reputation of the mark ERGONOMIC DESIGNS. A number of Google results and statistics are submitted. For instance a search for “ergonomic designs” returns “www.ergonomicdesigns.co.uk” as the number one search result, demonstrating the Complainant’s brand strength. Google Insight which reveals patterns of searching shows a large increase in the number of customers searching for “ergonomic designs” following the Complainant’s advertising campaign, prior to which no one in the UK had searched for the term.
Further data submitted include that between September 2008 and June 2010, 54,872 individuals were directed to the Complainant's website "www.ergonomicdesigns.co.uk" via Internet search engines, and 10,964 individuals visited it without the use of a search engine, demonstrating considerable consumer goodwill.
The Complainant contends that the term “Ergonomic Designs” is not wholly descriptive and is not a combination of words that would ordinarily be used in the English language, citing Your Golf Travel Limited v. Hardelot Holidays Limited, WIPO Case No. D2007-1058. Alternatively, if the term “Ergonomic Designs” is wholly descriptive, it has acquired a secondary meaning.
The Complainant contends that the disputed domain name is confusingly similar to its trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name and has not, before the dispute, made demonstrable preparations to use it in connection with a bona fide offering of goods.
The Respondent has not been commonly known by the disputed domain name but trades as “Stylish Solutions Limited”, whose owner has other businesses. The Respondent is not making or intending to make any legitimate noncommercial or fair use of the disputed domain name and has threatened to use it unfairly to drive traffic from the Complainant’s website to the Respondent’s. The Complainant says that the Respondent’s mention of a future venture into ergonomic office furniture, which the Respondent says is on hold, is fictional.
The Complainant further contends that the disputed domain name was registered and used by the Respondent in bad faith. The Complainant says that the principals of itself and the Respondent had business discussions in or after 2004 but are now competitors. The Complainant says that recent correspondence between the Parties, produced in evidence, demonstrates animosity between them. The Respondent has acted in bad faith for the reasons that follow.
The Respondent has selected a name which is not its own. At present the Respondent conducts its business using derivatives of the “Stylish Solutions” mark.
Given the history between the Parties, the Respondent knew of the Complainant and knew of the Complainant’s rights in the mark ERGONOMIC DESIGNS.
The Respondent by email threatened to “use one of my other domain names “www.ergonomicdesigns.com” and stated “I am sure I could drive a lot of traffic to my site”. The Respondent clearly intends to use the disputed domain name to cause the Complainant disruption and damage by driving “a lot of traffic” to the Respondent’s website.
An offer to sell the disputed domain name was expressly communicated to the Complainant in an email from the Respondent. The disputed domain name was registered and acquired for the purpose of selling, renting or transferring to the Complainant for valuable consideration, namely £10,000, being in excess of the registrant’s out-of-pocket costs directly related to the disputed domain name, and also in order to tarnish the image of the Complainant.
The Complainant has submitted a number of citations of previous decisions under the Policy that it considers to be possible precedent.
The Complainant requests the transfer to it of the disputed domain name.
The Respondent denies the Complaint.
The Response takes the form of point by point responses interspersed into a copy of the Complaint, many of which are repeated. The Respondent’s main points of contention include the following.
It is disputed that the Complainant is a manufacturer, but asserted it is rather a seller through the Internet.
The Respondent argues 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.
The Respondent contends that statistics produced by the Complainant do not indicate the strength of the trademark ERGONOMIC DESIGNS and that the attraction of visitors to the Complainant’s website is based on products sold and not on the Complainant's brand name. Google statistics show that the words “ergonomic designs” were searched for since 2004, whereas Ergonomic Designs Limited was registered in 2007. Traffic is driven to the Complainant through sponsored advertisements and not through brand strength. Much of the Complainant’s trade is in products of other brand names including Hudson Reed, Home of Ultra, Grohe, Aqualisa, Salamanda, Triton, and Stuart Turner.
The Respondent contends that in its possession of the disputed domain name it has not attempted to misrepresent any connection with the Complainant, and refers to correspondence from the Respondent exhibited by the Complainant. The thrust of the correspondence is that the disputed domain name was purchased for legitimate purposes currently on hold, for bona fide reasons in connection with for instance furniture, and without intention to disrupt the business of the Complainant,
The Respondent produces a copy of a letter, undated but referring to the present dispute, from a named person who describes an association with the Respondent’s business. The letter states among other things that discussions have centered around a development of the Respondent’s business into ergonomically designed furniture, but the project is on hold. The writer specifically denies any intention of confusion with Ergonomic Designs Limited.
The Respondent refers to its email of November 11, 2009 to the Complainant (which mentioned possible use of the disputed domain to drive traffic to the Respondent). It says that this was borne out of frustration with Ergonomic Designs Limited and another company over the disputed use of images and drawings on the Complainant’s website.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Some of the submissions of the Parties may refer to matters of alleged trademark infringement or passing off more properly dealt with in another forum.
As mentioned in Section 3 above, the Complainant submitted a Supplemental Filing on September 10, 2010 The Respondent then wrote to the Center on September 10, 2010, enquiring about Supplemental Filings and saying that it disputed content in the Complainant's Supplemental Filing. As the Center informed the Parties, paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from either of the Parties. Having perused the Complainant's Supplemental Filing, the Panel finds that it adds nothing that could not have been included the first time, and that it essentially reiterates the Complaint. The Panel does not require and has not admitted any Supplemental Filing.
A. Identical or Confusingly Similar
The Complainant is required to prove that it has rights in a trademark within the requirements of the Policy. In this case the trademark ERGONOMIC DESIGNS is not a registered trademark and the Complainant asserts common law rights.
The Complainant states, and it is not contested, that “Ergonomic Designs Limited” is a company duly incorporated in the United Kingdom under the Companies Act 1985 (Company Number: 6065684). Its turnover is currently in the region of a half-million pounds per year. The company has been featured in House Beautiful Magazine for design. It trades extensively on the Internet and has since 2007 used the domain name <ergonomicdesigns.co.uk> for its website. It would appear that the company name and trademark may reasonably be considered to be associated with the Complainant's activities in trade, principally the supply of bathroom fittings.
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 Complainant must prove that the disputed domain name <ergonomicdesigns.com> is confusingly similar to the trademark ERGONOMIC DESIGNS. Clearly, the effective component of the disputed domain name is identical to the trademark, as far as is allowed by the limited character set available for domain names, and disregarding the gTLD descriptor “.com”. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. Since this may require the Complainant to have information available only to the Respondent, it is conventional for the Complainant to state prima facie that it has been unable to find evidence of the Respondent’s rights after reasonable enquiry, and for the Respondent to have the opportunity to establish its rights or legitimate interests in the terms of paragraph 4(c) of the Policy or otherwise.
In the terms of paragraph 4(c)(i) of the Policy, the Complainant says that the Respondent is not making a legitimate use of the disputed domain name for the provision of goods or services and is not using it at all. The Respondent states that it has and has had plans for the use of the disputed domain name in connection with ergonomic furniture. A letter from a business associate produced in support of verification of that claim is undated but refers to the dispute by number and clearly post-dates the commencement of proceedings. Having reviewed all of the evidence the Panel is unable to find evidence, sufficient to satisfy the Panel, of use or demonstrable preparations, prior to notice of the dispute, for the use of the disputed domain name for a bona fide purpose by the Respondent.
In the terms of paragraph 4(c)(ii) of the Policy, it is noted that the Respondent is known as Stylish Solutions Limited. No evidence has been produced by the Respondent to the effect that either the company or its proprietor has been commonly known by the disputed domain name.
In the terms of paragraph 4(c)(iii) of the Policy, since the disputed domain name is not in use, it is not realistically possible that the Respondent is making a legitimate noncommercial or fair use it. According to the evidence of email exchanges between the Parties, including the Respondent’s message of November 11, 2009, it would appear that the Respondent has contemplated use of the disputed domain name for the unfair purpose of diverting traffic from the Complainant.
The Panel can find no other evidence of rights or legitimate interests in the disputed domain name accruing to the Respondent, and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.”
The disputed domain name was acquired by the Respondent in September 2009, some two years after Ergonomic Designs Limited was registered as a company by its rival the Complainant. 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. On all of the available evidence, including the animosity between the Complainant and the Respondent exemplified by the emails of November 11, 2009, January 5, 2010 and earlier messages embodied therein, the Panel finds it 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. As noted by the learned panelist in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, non-use of a domain name for Internet purposes coupled with other ingredients of bad faith intent may nevertheless constitute use. 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” [being the disputed domain name] 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. The Panel finds bad faith registration and use of the disputed domain name by the Respondent within the meaning of paragraph 4(b)(iii) of the Policy.
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. In the circumstances contemplated by paragraph 4(b)(i) of the Policy, the Panel finds on the balance of probabilities that the Respondent had a primary intention ultimately to offer the disputed domain name registration to the Complainant for a sum in excess of the out-of-pocket costs directly related to its acquisition.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <ergonomicdesigns.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: September 24, 2010