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Proof of Demonstrable Preparations; What Standard?

What is sufficient? Sufficient is not merely alleging preparations without demonstration. Intention to activate a website in the future is not proof. DigiPoll Ltd. v. Raj Kumar, D2004-0939 (WIPO February 3, 2005). Between something and a sufficient something is a chasm. Different panelists; different proof. Some want more; some accept less. Since the evidence is under the respondent’s control production should be more rather than less. The standard should be comparable to complainant’s burden for common law trademark rights. Proof requires concrete evidence. “ ‘Concrete evidence’ constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the panel require a respondent come forward with concrete evidence that the assertions made in the response are true,” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 21, 2000).

The disputed domain name in Tate & Lyle Ingredients Americas Inc. v. Institute for Creative Thoughtcrime, FA0908001280926 (Nat. Arb. Forum October 6, 2009) is <>. Complainant owns a USPTO registered trademark for KRYSTAR . The Complainant first used its trademark KRYSTAR in July 1987. The Respondent registered the domain name in dispute in 1999, but claims priority in that it used the term for its business 13 years earlier. Its evidence is thin. According to the Complainant “[t]he only ‘evidence’ adduced by the Respondent is a Pennsylvania Tax document that expired in 1997 and an untitled printout which states the trade name is inactive as of September 30, 2006.” Moreover, the Respondent “relies on its claim that Mr. Allen’s friend, Ms. Low, has been in the business of selling books under the Krystar name for 23 years. Respondent’s reliance on the purportedly superior rights of a third party (Ms. Low) is an improper invocation of jus tertii, which is generally not permitted in trademark disputes.”

Not true says the Respondent, that it has no evidence: “Complainant appears to either have failed to examine the evidence provided, showing that Ms. Low has used the name in her business since 1986, or has chosen to ignore the evidence and simply repeated that there is no evidence. Additional evidence is provided in the form of a “North Carolina Sales and Use Tax” form with Ms. Low’s name and “Krystar” on the document, along with the company’s tax account number.” And, if this is not enough “a simple phone call to the Pennsylvania or the North Carolina Department of Revenue would establish that Ms. Low has operated under the name ‘Krystar’ since 1986.” Moreover, “the fact that the Pennsylvania document expired in 1997 is not germane, since it does establish Respondent’s claim that the business was started 18 months prior to the use of the name by complainant.” “Ms. Low” also submitted a “statement” which the Panel accepted as proof that “she is the beneficial owner of the domain name in dispute” (although there is no indication in the decision that the “statement” was under oath).

“Krystar”– Crystalline Fructose – a sweetener appears to have become a popular personal name. When it escaped its marketing heritage is not recorded. Neither does the Respondent explain where the name came from. The Complainant has a point: “The submissions of the Respondent constitute no proof whatsoever of common law trademark rights owned by the Respondent, as Respondent asserts. It is axiomatic that to establish common law trademark rights, it is necessary to show proper trademark use of the mark by the party asserting those rights, and continuous use of that mark, on the goods or services for which trademark rights are claimed.” It appears that the Respondent is being held to a lower standard in not having to prove its alleged common law right of priority.

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