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Allegations Alone are not Proof of a Trademark Right; Subsidiary Must Prove Consent

Although timing of a trademark registration is not a factor for standing it is critical in assessing bad faith. Unless complainant is able to persuasively demonstrate that its commercial persona preceded registration of the domain name the complaint must be dismissed since no amount of post-registration reputation can overcome evidence that the trademark was nonexistent at the earlier time. A variation on this principle is claimed authority by a subsidiary or division of a the trademark owner whose evidence falls short of demonstrating the relationship. The Complainant in Old Republic Home Protection Co., Inc. v. Direct Privacy ID 7F9AB, D2012-2366 (WIPO January 11, 2013) alleges a corporate relationship with the trademark owner. But the allegation is insufficient without proof.  The Panel points out that

[w]hile the Complainant asserts that it is a wholly owned subsidiary of Old Republic International Corporation and that Complainant has the explicit consent of its parent to use the OLD REPUBLIC service mark, it has provided no evidence whatsoever to support these allegations.Under these circumstances, the Panel can only conclude that, if the Complainant does indeed have the explicit consent of the owner of the OLD REPUBLIC service mark to use this mark, then documentary evidence of the alleged permission would be readily available. Moreover, despite the assertions set forth in the Complaint, the Panel concludes that mere attorney argument is not evidence and is insufficient to establish the truth of the allegations presented.

Ironically, the Complainant prevailed in two earlier proceedings, both on respondents’ default. However, to have been thought persuasive in past disputes is not proof of rights in the present one.  Complainant’s allegation of standing not supported by the record can be lethal even where respondent defaults. If the relationship offering in the latest of the Old Republic cases is short of proof the decision is not surprising:

The Panel notes that Complaint “does identify two previous UDRP decisions which indicate that Complainant had sufficiently proven that it had explicit consent from Old Republic International Corporation to use the OLD REPUBLIC service mark … [but in this one] the Panel is left wondering why the Complainant did not simply submit the same documentary evidence in this case….” The other two are Old Republic Home Protection Co. Inc. v. Lena Hawkins, D2010-0213 (WIPO March 28, 2013); Old Republic Home Protection Co., Inc. v. WhoisGuard Protected/MAJAS, Adrejs Lisments, D2010-1294 (WIPO September 10, 2013).

The lesson is important. Every case is one of a kind. Nothing should be taken for granted. Success in a prior proceeding is not judicial notice of a right in the next. As a general rule if there is no record there is no case. In Old Republic, same attorneys in all three cases. Complacency? The Panel lists the delinquencies:

1) Thee Complainant also does not allege that it owns common law service mark rights in OLD REPUBLIC.

2) [And, although it alleges] that it has been engaged in the business of offering home warranties to consumers while using its trade name Old Republic Home Protection Co., Inc. for twenty five years … [it] ails to allege that it has been using OLD REPUBLIC as a service mark during this time period.

3) [Although] Complainant owns and operates a website at <orhp.com> where it arguably uses OLD REPUBLIC as a service mark on its website … [it] to indicate when it began to use OLD REPUBLIC as a service mark and, therefore, has failed to allege a proper priority claim relevant to the date the disputed domain name was registered.

Old Republic is an example of a category of “but for” cases; the evidence exists (obviously exists based on the earlier decisions), but has not been marshaled. The trademark owner is Old Republic International Corporation not Old Republic Home Protection Co., Inc.

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