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Proof of Common Law Right

The test for proving a common law right is demanding. It cannot be satisfied by asserting facts unaccompanied by evidence establishing their truth. The Overview of WIPO Panel Views on Selected UDRP questions at paragraph 1.7 states in relevant part

The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark and the nature and extent of advertising, consumer surveys and media recognition.

The objective evidence to meet the test is particularly within the complainant’s control, just as the evidence for a right or legitimate interest is in the respondent’s. Vehicle dealerships pass the WIPO Overview test, Weil Cadillac-Hummer, Inc. v. Stanley Pace, D2010-1711 (WIPO December 7, 2010), and cases cited therein; trademarks descriptive of the complainant’s services on assertions alone do not, ElderCare Advocates, Inc. v. Isaac Goldstein, FA 1357548 (Nat. Arb. Forum December 13, 2010).

In 3DCafe, Inc. v. 3d Cafe.com, FA1010001351489 (Nat. Arb. Forum December 20, 2010), like “Eldercare Advocates” another generic phrase unparticularized as to source, the Complainant alleged a common law trademark by assignment from an entity that operated its business prior to the registration of the domain name. However, the Complainant failed to name the entity or entities which allegedly traded under the mark since 1991. Commenting on this, the Panel observed that “[a]ssuming that it did have some right as an assignee to an interest in a common law mark if any, the fact that it may have had a presence on the Internet since 1991 is not enough. The one document made 19 years ago is hardly sufficient to provide evidence of a common law mark.” Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts, Time Equipment Corp. v. Stage Presence, D2003-0850 (WIPO December 23, 2003).

The Complainant in Tower Research Capital, LLC, managing member of Limestone Trading, LLC v. Limestone, FA 1349315 (Nat. Arb. Forum December 22, 2010) demonstrates expectation satisfied. It t “provided evidence to show that it has been in the business of futures trading since its first registered itself as a limited liability company with the state of Delaware on April 5, 2000.” It also offered proof that it has traded several million contracts since 2000 on various exchanges worldwide, and that it has done so extensively and continuously under the LIMESTONE TRADING mark. The disputed domain name is a string of letters abbreviating the dominant portion of its mark “lmst” with the suffix “fx” which is an abbreviation of the phrase “foreign exchange market.” The Panel agreed with the Complainant that the “Respondent’s use of an abbreviation for the dominant portion of its mark coupled with an abbreviation of a term that describes Complainant’s trading business renders the domain name confusingly similar to Complainant’s mark.”

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