Generic Domains and the UDRP

A controversial domain name dispute over ErgonomicDesigns.com recently came to my attention. Ergonomic Designs Limited, the Complainant, filed the complaint with the World Intellectual Property Organization (WIPO) against Stylish Solutions Limited, the Respondent. The result of the dispute was a transfer. As someone who is very familiar with and sees domain name disputes on a daily basis, the troubling part of this case is the glaring fact that the Complainant does not have a registered trademark for the term ERGONOMIC DESIGNS.

The Complainant claimed that it had acquired common law trademark rights, but the company was only created three years ago, which is likely not enough time to establish common law trademark rights in such a generic term. Despite this fact, the Panel found that the term ERGONOMIC DESIGNS had acquired secondary meaning based on the evidence provided, which included the Complainant’s business registration under that name; its primary domain, ErgonomicDesigns.co.uk; mentions of the Complainant in magazines; and web search statistics showing that 54,000 visitors had searched for the Complainant using those terms.

In my opinion, the Panel made an error by exceeding the scope of its mandate. This type of decision should have been left to the UK or EU Community trademark offices. The Complainant does not hold a trademark for the term ERGONOMIC DESIGNS, therefore, under the UDRP, the complaint should have been denied despite all of the evidence provided by the Complainant.

By single-handedly determining that the Complainant had developed secondary meaning in its arguably generic name and awarding a transfer of the domain, the Panel granted the Complainant a de facto trademark. In doing so, the Panel denied the Respondent ownership of a name which might very well have been rejected by a trademark office examiner since generic words can not gain trademark rights regardless of how extensively they are used. In the Respondent’s own words, 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 term is wholly descriptive”.

It is unfortunate that the Panel did not pay more heed to the Respondent’s argument because, upon review of these facts, it is clear that this is a case of what has earned the names “Reverse Domain Name Hijacking” (RDNH), which is an abuse of the Uniform Domain Name Dispute Resolution Policy (UDRP). This is not to say that the Complainant’s argument rose to the level of a false assertion of trademark rights, I simply think that it took a very long stretch of the imagination for the Panel to come to the decision that it did. It is my conclusion, therefore, that the Panel should have rejected the claim without prejudice and suggested that the Complainant re-file the complaint after it had passed muster with a trademark office and obtained a registration.

For another perspective on this decision, check out Michael Berkens’ post over at The Domains.