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.
The domain at issue is ErgonomicDesigns.com
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.”
Agreed
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.
Wow.
Absolutely disgusting and illegal. The UDRP acts as banana republic dictator, doling out adjudications arbitrarily as it sees fit. This is a major threat to domain owners. These disputes should take place in a court of law.
If you get a panel of ONE, you are going to lose your domain name. Almost all the outrageous decisions come from one guy that judges by prejudices not facts and there is nobody watching to keep him honest.
And….knowing that…..any domainer using one panelist deserves to lose the domain.
Can you be able to request to get more than 1 panelist?
Appeal.
Gnames
Yes the domain holder has a right to have a panel of 3, but you have to request it AND pay for it
$1,600 I think is the price last time I did it (in addition to attorney fees) and you Don’t get it back if you win.
But as Rick said its a must, if you care about that domain or any other ones you have.
Because once you lose a few of these, you will be labeled a cybersquatter and lose all future ones as well.
This is a business, treat it as such
Mitch
Actually there is no “appeal” from a UDRP.
You can file an action in federal court to hear the case, but its a new action and the UDRP stays on file even if you win the federal case.
(see above)
Of course a federal court action is going to cost you many times what a 3 person panel would have cost.
the big companies do and take what they want
Amazing
This is not a “huge” company.
you ever heard of the word appeal… somebody oughtta peel that guy off the bench and beat the crap outta him.
Todaro
No we don’t beat the crap out of people we disagree with.
The guy also is not a judge so he’s not on the bench and as I said above there is no “appeal” of a UDRP
“The UDRP acts as banana republic dictator, doling out adjudications arbitrarily as it sees fit. ”
That sounds like a pretty fair assessment of the current situation.
“Yes the domain holder has a right to have a panel of 3, but you have to request it AND pay for it
$1,600 I think is the price last time I did it (in addition to attorney fees) and you Don’t get it back if you win.”
That sucks, either way you lose something, people should’nt be paying extra for the “privilege” of a fair trial, having one panel judgments without “very strong pre fixed guidelines” is stupid and wide open to abuse or corruption.
..what is the cost for these cheap ***** filing for a UDRP ?
Gazzip
Filing fees depend on how many domains the complainant is filing for at one time
Assuming they are going after one domain then the filing fee with NAF is $1,300 unless the complainant is the one that wants the 3 member panel in which case it is $2,600.
The complainant does not get their fees back if they win.
There are other forums you can use to hear a case and fees do differ.
http://domains.adrforum.com/resource.aspx?id=1556 (pdf)
Thanks, I’ll check it out.
“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.”
“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.”
Looks like the guys knew each other from 2004 before the name was bought in 2009, sounds like a bit of a long standing grudge match going on perhaps ?
Maybe, it was a fair call afterall and not bad news for generics overall ? …he says in hope 🙂
let’s say i register a uk company, choosing the name “cool designs”.
cool designs ltd. advertises and sells products via the internet. its annual revenues are near GBP500,000.
several years later, a rival acquires the domain names cooldesigns.co.uk and cooldesigns.com.
he threatens to divert internet traffic unless we purchase the .co.uk domain name from him.
cool designs refuses and institutes a udrp. in the rival’s defence, it is argued that cool designs is not and cannot be registered as a trademark.
who should prevail?
doesn’t the uk registry have it’s own dispute resolution scheme?
one thing i find troubling in this decision and in many others is the attention given to data of search results by panelists but their apparent ignorance of how search results are at the present time routinely manipulated based on presumed location** of the IP from which the query comes. i.e., “localised search”. with the level of DNS manipulation today, two searchers in different parts of the world may receive different results for the same search query. the panelists need to learn this and think about it.
** the concept of “IP location” cannot be relied on with absolute certainty, for various reasons. among them, the fact that IP blocks and numbers within them are freely transferrable, whether intentionally (e.g. to customers or sudsidiaries) or not (e.g. via acquisitions or bankruptcies).
moreover there is nothing to stop and organisation from relocating and taking the IP’s with them. organisations with large IP allocations may fail to stay afloat, or they may move. the “IP location” databases used by the search engines are based on the then-location of the organisation who initially acquired the IP block.
Lets not forget…
the recent legal Internet revelation that the UDRP In-Staffers prepare the case findings (and that it is routinely cut N paste) and the underpaid panelists have
to rewrite the decision
IF they disagree…with the In-Staffers decision.
So basically the possibly not vetted bias “In Staffers”
( like In Your Pocket”) are judging the merits of the complaint without the defendants input and it is
up to then underpaid panelists to re-Cut N Paste the decision and apply case logic and facts ,OR
just leave it as is and collect the same monetary fee.
So lets not call them Panelists/Judges/Arbitrators
lets call them PUPPETS!
for it is the “IN ‘your pocket’ STAFFERS” who are pulling the strings behind the scenes and making these none sensible findings and that is why there is no consistency.
We need a senator or two at bat for an investigation, towards this unethical practice, don’t you think?
Alternativeview
Yes the .co.uk registry is Nominet and yes they do have their own dispute resolution for the extension.
Funny you mention that because they issued a 22 page opinion on the domain name ihateryanair.uk.co, which they took away from someone who was using it as a grip site and gave the domain to a trademark holder.
I passed the link over on thedomains Facebook page earlier today but here it is for the rest of you:
http://www.guardian.co.uk/business/2010/oct/12/i-hate-ryanair-website-closed
@MHB
Thank you for the link…
Yes…
Juan over at .Co Registry publicly stated several months back that…
THEY were soon to have there very own “Dispute Panel” soon!
So lets see, .CO Registry Knowingly sells you a major brand domain name
and makes a profit$$$$
but THEN (say Pepsi.co) wants toCLAIM IT!
THEY .CO Registry get to profit once again$$$$
“by finding against YOU” THE BAD GUY…
THEY SAY….” We Didn’t Know Anything,honest”
so you the LITTLE bad guy end up with..NOTHING!
Doe’s someone get played here. or what ? 🙂
MHB:
so do you think it’s ok for the rival who registers a domain name exactly matching my registered company name to attempt to force me to buy a domain from him?
are there arguments to be made for goodwill built over a number of years using a company name (even if it is not eligible for registration as a trademark)?
perhaps the due diligence required in registering a “generic” domain name goes beyond just trademark searches?
@ alternativeview
you said to MHB:
so do you think it’s ok for the rival who registers a domain name exactly matching my registered company name to attempt to” force me to buy a
domain from him?
Well i say that is exactly .
what Registry .CO did …
FORCED YOU TO BY IT..
OUT OF FEAR!
just saying 🙂
I was surprised to read this decision this morning. This seriously was a bad call on the panelist. What i dont get is why the panelist doesnt have the common sense to know that ergonomic is a style that relates to design (which is descriptive). Not only that, its not even the whole name of the company. Isnt the company’s name “Ergonomic Designs Limited”? So why would they deserve Ergonomic Designs? why not make the claim that they own Ergonomic while they are at it?
I guess common law is just as strong as not having an international trademark. Good to know!
“If you get a panel of ONE, you are going to lose your domain name. Almost all the outrageous decisions come from one guy that judges by prejudices not facts and there is nobody watching to keep him honest.”
I agree with that. Panelists do not care about domainers…
I’d have a lot more sympathy for the respondent if they weren’t in exactly the same business as the complainant. So of course they knew about this other company, and any use of the domain (which they acquired years after the other company had registered its name) would surely have led to confusion among potential customers.
On the other hand, if the domain hadn’t actually been used for anything yet, it’s a tougher call. It seems odd to punish someone who you _suspect_ is going to commit a crime (though it does happen). Plus, the complainant was remiss in not trademarking its name.
In any event, I don’t see this as a slam-dunk case for the respondent, as many of you seem to.
Randomo is closest to correct. The respondant clearly acted in bad faith. The fact that they are competitors is what is driving this decision. Domainers should not be scared by this one.
The worrying thing about this decision is the use of the phrase “de facto trademark”.
If companies can make a claim based on a “de facto trademark” that would be thrown out of any formal registration process because of the use of generic terms, then we’re on a very slippery slope indeed.
I am a domainer, not a UDRP judge.
This apparently is an unpopular decision but with the evidence presented I would have given the complainant the name.
It looks like bad faith to me. Had he used the name for a legit purpose that would have helped him. That would cause me to, most likely, have ruled in his favor.
I don’t agree with a few of the comments above.
Lets say I owned FlowerBasket .com (I don’t) and used it for an
online floral shop.
10yrs later someone opens a local chain of floral stores named
‘Flower Basket’.
Plus, applies for a TM on ‘Flower Basket’.
Why should the newest entry have the right to the domain?
Why I mentioned local?
In the U.S., we think we are the center of the universe.
I’m sure there are some floral stores in
UK, Canada, New Zealand, South Africa, Singapore, Australia, etc
named Flower Basket.
Unless it is a blatant TM infringement (like CocaCola, Zerox), we
need to go back to the principle ‘first come, first serve’.
And, if the late business entry wants the domain – buy it.
Meyer is correct.
“…..finds on the balance of probabilities”
So no facts…..just some mysterious mathematical probablility formula they use? Wow…..what a lame statement.
“…….it may reasonably be concluded that the offer was not a friendly on”
I did not know business was supposed to be friendly. Is that a requirement for competitors now, to not compete and be as friendly as possible?
The domain is generic. Just b/c the other company chose a generic name, but did not secure the domain should not preclude the Respondent from owning that generic domain.
I’ll say it again: It’s a generic domain, WIPO !!!
WIPO ……… I’m calling you out and stating that you should fire this panelist.
We all seem to agree that the decision was wrong, biased and potentially illegal. It’s like UDRP law is the wild west. We all agree on this but what can be done? Do you think WIPO panelists read domain blogs? Maybe, I guess, but we can’t assume. We need some kind of domainer collective legal site where we can cite precedent setting cases and give each other advice on how to proceed when a claim is filed against you. I think a lot of the comments here are reasonable arguments that the panelists should hear.
The FlowerBasket.com example is a poor analogy. That domain would almost certainly be used to sell flowers and/or flower baskets. But ErgonomicDesigns.com could be used in countless industries where the products are designed with ergonomic properties – anything from computers keyboards to shovels.
The fact that this domain was acquired by a direct competitor, in precisely the same sub-industry (shower and bathroom faucets) as the company that had used that exact business name for years, shows a clear bad-faith action, IMHO.
Christopher
Here what we can try to do:
1st all domainers need to answer UDRP complaints.
If you have no plans on defending a complaint then just turn the domain over as soon as you get the complaint
2nd domain holders need to elect and pay for a 3 member panel everytime.
3rd the ICA is working on getting some changes made to the whole UDRP process, if you are concerned contribute money to them.
4th at TRAFFIC there is a Congressman attending so if you are at the show express your concerns to him and bring your checkbook.
“The fact that this domain was acquired by a direct competitor, in precisely the same sub-industry (shower and bathroom faucets) as the company that had used that exact business name for years, shows a clear bad-faith action, IMHO.”
I agree with randomo, its a fair call.
They (already knew each other) and the domain holder approached the Complainant to try and sell it to them, hence the find of bad faith even though the domain is generic and not a trade mark.
He was aware of his competitors business at the time of purchase (2009) = registered in bad faith.
Oh well, looks like he lost his $650 purchase price.
JMHO
Mike, please don’t hold your breath waiting for UDRP reform to come from ICANN! Also, you should not assume that cost of defending a UDRP is “many times more” — or any more — expensive than filing a declaratory judgment lawsuit in the US federal courts. Particularly since a domain owner would have to do that if they lose the UDRP anyway, if they want to challenge that decision. When faced with a cease and desist demand and/or UDRP complaint, it often might be smarter to go to court first, rather than try to fight an adverse UDRP decision later.
some decent thoughts here.
the point i was aiming to make was that a company name and goodwill built upon that name can have value, even if it’s not protected by a trademark. and a third party could, in bad faith, try to exploit that value. what should happen in that case?
i agree with the commenters who see there was “bad faith” exhibited regardless of trademark issues. on the facts, it seems the respondent was trying to sell the name to the complainant, in a manner reminiscent of classic 90’s-era cybersquatting: “i’ve got your company name (mcdonalds). what are you going to do now?” as far as i can tell, here the complainant did not “seek out” the respondent and draw him into a udrp. i.e. there was no combing of the internet for possible TM infringement, as the major TM holders do.
i also agree with those that see geographical scope as relevant. whether the issue is a registered TM, a common law TM or (as in this case) some other intangible like goodwill, panelists have to be mindful of geographic scope. if they are placing weight on evidence submitted in the form of search engine results, then they should have some knowledge of how search engines work. for better or worse, in today’s CDN-dominated internet, the IP number the DNS query comes from dictates the data you get back. obviously cookies can play a role as well.
i think one has to look at the facts in each udrp case. it’s tempting to paint every decision with broad strokes as either supporting TM domains (TM holders) or supporting generic domains (domainers).
but i think there’s more to them.
someone mentioned the need for more publically-avalaible analysis of udrp decisions. one benefit of the udrp is that we have the full body of decisions, not simply a representative selection. what about “profiling” each panelist and posting that info? surely, there are some nonobvius patterns to be discovered in their decisions. just a thought.
@ alternativeview
You said:
what about “profiling” each panelist and posting that info? surely, there are some obvious patterns to be discovered in their decisions. just a thought.(UNQUOTE)
Well, In that there is PROOF of clandestine Cut N Paste going on,routinely behind the scenes this makes a world of sense BUT… If the so called, IN-STAFFERS are prior-prepping written decisions based on biased broad assumptions unwisely and clandestinely behind the scenes.
YOU WOULD HAVE TO KNOW WHICH… – unethical IN STAFFER –
prepared the judgment,and seeing
there is new evidence that they ARE ROUTINELY and BLINDLY
making Arbitrary UNRP judgment decisions for the Panelists
YOU WOULD HAVE TO KNOW who the..
GHOST IN STAFFER WAS.. to TIE IN and match data with A PANELIST.
No transparency and quite appalling, much like a fishy Shell Game.
i found this: http://www.udrpinfo.com/panl.php
it profiles panelists on their overall decisions, in each venue.
but i was thinking of more in-depth analysis
e.g. from what perspective does each panelist see the recurrent issues?