It is a misapprehension of domain name jurisprudence to believe that the registration of a descriptive phrase that is identical or confusingly similar to a trademark is ipso facto legitimate. Legitimacy depends on the website’s content, possibly the parties’ relationship and their geographic locations. That the domain name is inactive is not a barrier for finding bad faith use; and, by deductive reasoning bad faith registration.

A recent “comment” on <udrpsearch.com> concerning a decision in Ergonomic Designs Limited v. Paul Moore, Stylish Solutions Limited, D2010-1344 (WIPO September 24, 2010) read: “Not sure how the panel could deny that ERGONOMIC DESIGNS is descriptive.” It is not that the Panel denied that the trademark was descriptive – it is what it is – but the Complainant proved requisite common law credentials (sufficient, that is to satisfy UDRP threshold requirements) and both Complainant and Respondent are resident of the United Kingdom. The evidence supports the Complainant’s contention that ERGONOMIC DESIGNS has achieved secondary meaning in the marketplace. Not only is the Complainant ranked at the top of a Google search, the more robust analytics proves the magnitude of the traffic to its website.

Thus, even assuming “ergonomic designs” is descriptive, the burden shifts to the Respondent to prove its right or legitimate interest in the domain name. To prevail under paragraph 4(c)(i) of the Policy where the domain name is inactive the respondent must submit proof of demonstrable preparations to use it in the course of its business. This it failed to do. The Respondent is not “commonly known by the domain name” [paragaph 4(c)(ii)] and the domain name is not being used in a noncommercial or privileged way [paragraph 4(c)(iii)].

That leaves the analysis of bad faith. There are circumstances under which a party may register and not use a domain name if it is impossible “to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate,” Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). In practice, the higher the visibility of the trademark the more unified are registration and use. In Telstra, the requisite mala fide intent was inferred from the visibility of the trademark. That is equally the case with Ergonomic Designs. “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.”

Respondent in Ergonomic Designs forfeited the domain name because the record evidences that it registered the domain name in bad faith to take advantage of the reputation of Complainant’s trademark. The bad faith was compounded by pre-proceeding communications:

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.

So, to answer the puzzlement in the UDRPSearch “comment”: it is not that the Panel denies “ergonomic designs” is descriptive, but Respondent offered no proof that it had a right or legitimate interest in the domain name, from which that and other evidence demonstrated bad faith registration.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com