PARTIES' CONTENTIONS:
COMPLAINANT:
The Complainant made the following contentions.
1. To summarize, the Complainant has sufficiently established its rights in the trademark EAMES. As the domain name eamesinspiredchair.com registered by the Respondent consists of the identical element EAMES, it has to be qualified as confusingly similar and, moreover, partially identical to Complainant's trademarks. The highly descriptive term “chair” for products in class 20 does not at all confer the required minimum degree of distinctiveness to the domain name, but increases the chance of incorrect attributions to Complainant’s products.
2. To the best of Complainant’s knowledge, the Respondent has not been commonly known by the domain name EAMES. To the contrary, the Complainant is very well known under the trademark EAMES. The trademark has become a well-known brand and, therefore, an asset that represents a most valuable goodwill exclusively owned by the Complainant.
3. The Respondent has no connection to the Complainant or its trademarks and therefore no interest in a domain name containing "EAMES". The Respondent is making no legitimate non-commercial or fair use of the domain name, but is rather misleading and diverting consumers by giving the impression to be connected to the Complainant, since both the Respondent and the Complainant are furniture retailers. Therefore, the Respondent is also tarnishing Complainant’s trademarks and good reputation.
4. The Respondent registered the disputed domain name on 15 May 2010, and therefore well after the priority dates of all of Complainant’s EAMES trademarks. The Respondent must have been aware of Complainant’s trademarks and the reputation associated with the trademark EAMES.
5. It is extremely unlikely that the Respondent has chosen the domain name eameschairinspired.com incidentally, as the domain name apparently refers to the chairs designed by Ray and Charles Eames.
In view of the fact that Complainant’s trademarks are registered for furniture and that Complainant is offering design furniture, Respondent's domain name eameschairinspired.com under which furniture (above all chairs) are offered for sale, is capable of creating a likelihood of confusion as to source, sponsorship, and affiliation with Complainant’s trademark EAMES.
6. As a result, the Respondent is commercially benefiting from the connection the consumer assumes between the disputed domain name eameschairinspired.com and Complainant's trademark EAMES and as such evidences bad faith registration and use. The Complainant offering sofas under the disputed domain name is taking advantage of the fame of the EAMES trademarks for high grade design furniture. The Respondent is therefore seeking commercial gain out of the disputed domain name registration by using Complainant’s good reputation.
RESPONDENT:
The Respondent made the following contentions.
1. The complaint appears to incorrectly identifying WHOISPROTECTOR INC as the Respondent and owner of the domain name eameschairinspired.com. In fact, the owner of the domain name is ICON INSPIRED LIMITED, a limited company incorporated in the United Kingdom.
2. According to the Respondent Domain name is neither identical nor confusingly similar to the protected mark for the Complainant’s failed to meet standard of proof.
3. The Respondent has rights and/or legitimate interest in the domain name(s)
Categories of issues involved:
Use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services
4. The Respondent acknowledges that claims have been made by the Complainant. However, the Respondent takes the view that the Complainant has no good grounds for objecting to the Respondent's descriptive use of the name EAMES in the Respondent's domain name and the Claimant's allegations are denied in their entirety.
5. The Respondent has legitimately held the domain name eameschairinspired.com since May 2010 and this domain name has been used since then to offer for sale items of replica furniture in the United Kingdom, which the Respondent is fully entitled to do under current UK law.
Alleged Infringement of registered trade marks:
6. With regards to the Complainant's various trade mark registrations, the Respondent takes the view that the Complainant has sought to obtain exclusive rights to the common generic names that are used to describe or refer to particular furniture designs or styles. The Respondent refers to Article 7(d) of Council Regulation (EC) No. 40/94, which prohibits the registration of trade marks “which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade”.
7. The name EAMES has been used for many decades by numerous manufacturers to describe particular furniture designs and styles. As such, these names have now become generic and the Complainant's trade mark registrations would appear to be liable to be declared invalid on the ground that they are contrary to Article 7(d) of the Regulation (EC) No. 40/94.
8. Moreover, under Article 12 of the same Regulation, a trade mark owner is not entitled to prevent the use of “indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service” (Article 12(d)).
9. Along with many other furniture manufacturers and suppliers, the Respondent uses these names to describe items of furniture. As such, the Respondent does not consider that any infringement of the Complainant's trade mark registrations has taken place.
10. In summary, the Respondent does not believe that the Complainant has any valid grounds for complaint, but is simply seeking to restrict legitimate competition and obtain an unjustified monopoly in the production of generic furniture designs.
11. In addition, the Respondent was involved in negotiations, as long ago as 2010, with the Complainant's UK lawyers (RPC). As a result of these negotiations, the Respondent made various changes to the website as a result of the letter it received from RPC and, after the Respondent had confirmed the changes to the website with them, (including the use of “inspired” and “reproductions” to qualify the reference to the “Eames” trade mark), they informed the Respondent that they were “grateful for the changes made to your Eames Inspired website as a result” of the previous correspondence. The clear implication of the correspondence was that the Complainant was happy with the changes that had been made to the website and no longer had any objections to the Respondent's continued use of the domain name or to the name "Eames" within the website. It is unfair for the Complainant to suddenly change its position more than three years later.
12. Nevertheless, in order to avoid a prolonged dispute, the Respondent has requested that the domain name eameschairinspired.com be deleted and has ceased using the domain name as of Tuesday 16th February 2016.
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