“Design style using deliberately worn and deteriorated items to achieve an elegant overall effect.”
The Respondent began selling competing French and Tuscan “shabby chic” furniture and goods in 2008 at its online store, and acquired dozens of keyword URLs (including frenchcountryfurniture.com and tuscanfurniture.biz) to redirect customers to its website at belleescape.com.
Although the panel agreed that the domain was confusingly similar to the SHABBY CHIC mark, it explained that “shabby chic” is used by many third parties to describe an interior design style. Emphasis was placed on the fact that shabby chic is a “genre of products” sold by hundreds of retailers, and that there are dozens of domains incorporating the phrase which are not registered by the Complainant.
Additionally, the panel cited other UDRP decisions where it was found that a Respondent has the right to register and use a domain to attract Internet traffic based on the appeal of common phrases, even where it is confusingly similar to a registered mark, stating: “[R]espondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the disputed domain name is confusingly similar to the registered mark of the complainant.” See, e.g., Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843.
Although the term “Shabby Chic” has become popular and Complainant waited too long to enforce its rights in the domain name, it also seems clear that the Complainant came up with the term and was its originator, as noted by New York Magazine which said that -“‘Shabby chic’ may be part of the everyday style lexicon, but before 1989, the phrase simply didn’t exist—until (shabbychic.com) introduced its family-friendly, washable slipcovers, and single-handedly revived a long-dormant (not to mention, dowdy) design aesthetic.” Further, the designer, Rachel Ashwell, appears to be uniquely associated with this term and does not appear to have a peer in the design world who is as identified with the term as she is. The outcome for this case likely would have been different if the domain had resolved to a website that posted links associated with Rachel Ashwell and/lor the Complainant – as in that case there would have been evidence of bad faith and less standing for the Respondent to argue that they were using the term to describe the design style instead of trying to associate itself (and thereby create confusion) with the designer Rachel Ashwell.