Here’s yet more evidence that establishing rights to common law marks is not easy. In this recent denial from NAF, the Complainant sought to obtain the transfer of some domain names — liverpoollumber.com and joeehle.com — which were being used for complaints about the company and its founder/CEO. (Apparently the business thought they could silence the gripe site because it was confusingly similar; they may have a case under the ACPA, but certainly not under the UDRP on that point alone, as there are three prongs that must be made out.)
In support of its complaint, the Complainant provided an affidavit of the founder Joe Ehle, which detailed the use of the LIVERPOOL LUMBER CO INC and JOE EHLE marks over several decades. Neither mark appears to have been registered.
As I recently showed, the bar is high for common law marks, and a single affidavit is probably never going to be sufficient (unless the unregistered mark is so immediately recognizable that a Panel can’t conclude otherwise; I can’t imagine that ever being the case, as if it was that recognizable, you’d expect it to be registered at some point). That’s exactly how the Panel held here:
Complainant alleges that both marks have been used in conjunction with the lumber products business it runs and in conjunction with one another, the LIVERPOOL LUMBER CO INC mark since the 1940s and the JOE EHLE mark for the last 20 years. Complainant provides an affidavit where Mr. Joseph Ehle testified to the effect that the lumber company has been in his family since its opening in the 1940s. Complainants have also provided corporate registration documents from New York state including the date of formation. Except for the affidavit of Mr. Joseph Ehle, no other evidences was submiited to support the common law rights in either LIVERPOOL LUMBER CO INC or JOE EHLE marks.Common law rights arise from actual use of a mark in connection with certain services and/or products. In addition, to successfully assert common law or unregistered trademark rights, a Complainant must show that its alleged mark has become a distinctive identifier associated with the complainant or its goods and services.
. . .
In connection to LIVERPOOL LUMBER CO INC, the Complainant asserts that it acquired common law rights for services of sale distribution and installation of windows, doors, cabinetry, interior and exterior fabrications and other lumber related products and related design services. The evidence brought by the Complainant to support this assertion refers to the date of creation of the business back in 1940s, the advertisement and the sales under the alleged mark level of $8 million per year. All this data results, mainly, from Joe Ehle’s affidavit. Except for the registration information of the company LIVERPOOL LUMBER CO., INC and two ads by which the services of the company LIVERPOOL LUMBER CO., INC with its contact data are presented, none of the evidence brought, refers to the use of mark LIVERPOOL LUMBER CO., INC in connection to certain services, but to the name of the company LIVERPOOL LUMBER CO., INC selling these services. Moreover, after performing its own search on internet, the Panel found that no reference is made to LIVERPOOL LUMBER CO., INC as a mark for certain services but to LIVERPOOL LUMBER CO., INC as a company name with contact data delivering such services. It is also, the opinion of the Panel, that the Complainant failed to show that its alleged LIVERPOOL LUMBER CO., INC mark has become a distinctive identifier associated with the Complainant or its goods and services.
. . .
Joe Ehle is the CEO and President of the company LIVERPOOL LUMBER CO., INC. The Complainant asserts common law trademark rights in JOE EHLE for the same services provided by the company, because he has been associated with the business for more than thirty years. The only evidence provided in support to this statement is Joe Ehle’s affidavit and an article in some “Business publication” , which mentions Ehle as the President and Owner of the company LIVERPOOLLUMBER CO.,INC. No mention whatsoever is made in connection to offering the company services under JOE EHLE trademark.
JOE EHLE’s name does not appear on the Complainants’ marketing material or building.
The Panel finds that the Complainant has failed to establish its rights in the JOE EHLE mark under Policy ¶ 4(a)(i). . . . (emphasis added)
This is an important distinction. A company/business name, or a personal name, is not necessarily a trademark or service mark! A Complainant has to show an actual use of the mark in connection with a service or products. So, either you’re doing something and advertising your doing of that something under this name — Johnny’s Expert Dog-washing Services, Inc. — or you’re putting your mark on a widget that you’re selling to a consumer. Here, apparently the Complainant wasn’t doing either, merely listing the company name on advertisements which sold the products that it was in the business of selling. In any event, the Panel did not find the evidence submitted particularly persuasive.
I think it’s quite easy to say that Respondents are in a much better position in cases under the UDRP that invoke common law rights in a mark, because it’s always easier to poke holes in what the other side is arguing. And from a Complainant’s perspective, if unregistered rights are all that you have, you should absolutely bury the Panel with evidence of your rights, because a Respondent’s job of calling that evidence into doubt is so much easier.
The Panel didn’t even reach the rights or legitimate interests of the Respondent in this decision, though I think they would have had a strong argument to make that the sites were being used for legitimate gripe sites about the Complainant’s business. (I checked and there doesn’t appear to be any commercial gain from those web sites at all, which is good if you’re looking to set up such a gripe site!)
