The late Theodore Presser would be proud to know that his lawyers got it right
A couple of days ago, here, I reviewed Gookinaid ERG, Inc. v. Valda Krievane, WIPO Case No. D2008-0487 (Alan L. Limbury, May 28, 2008), a case in which the Complainant failed to demonstrate its common law trademark rights, despite the fact that it appeared as though the Complainant had such rights. In other words, the case turned on a failure of proof. That case raised for me a simple question: What level of proof is sufficient to demonstrate common law trademark rights?
I found the answer this morning in the newly published decision Theodore Presser Company v. John Smith/Whois Protection, WIPO Case No. D2008-0549 (Christopher J. Pibus, May 29, 2008). In that case, the Panel required the transfer of theodorepresser.com to the owner of the common law trademarks THEODORE PRESSER and THEODORE PRESSER COMPANY.
Despite claiming use of the THEODORE PRESSER and THEODORE PRESSER COMPANY marks since 1883, the Complainant had not obtained any registrations for either mark. In the absence of such registrations, the Complainant had to demonstrate its common law rights in such marks (or at least one of those marks) to support its UDRP claim.
Complainant's counsel was up to the task. Rather than rely on bald assertions by counsel or the Respondent's use of the Complainant's mark (as was the case in the aforementioned Gookinaid ERG decision), Complainant here evidenced its trademark rights through a declaration from one of the Complainant's executives. According to the Panel:
"In the absence of any evidence to the contrary, the Panel accepts the evidence put forward by the Complainant, namely the Declaration of Hayden Connor, the Chairman of the Theodore Presser Company. The Connor Declaration confirms that the Complainant has been using the names THEODORE PRESSER and THEODORE PRESSER COMPANY since at least as early 1883, in connection with publication of The Etude magazine, music catalogues, and individual music sheets. In addition to its own publications, the Complainant also represents 70 other American and foreign publishers in connection with the distribution and sale of music catalogues and music sheets.
Based on this evidence, the Panel is prepared to find that the Complainant has a reputation in the trade name and marks THEODORE PRESSER and THEODORE PRESSER COMPANY with respect to music catalogues, individual music sheet packages and with respect to music education and scholarships."
Given the extensive use of the Complainant's mark (as evidenced by the declaration), and the Respondent's use of the disputed domain to provide sponsored links to the Complainant's competitors, the determination of bad faith registration and use was an easy one for the Panel.