Recent Case Notes & Commentary

Insufficient Evidence to Show a Common Law Trademark

Mr. Cinar Orge Saylan and Mr. Caglayan Orge Saylan v. GKG.NET Domain Proxy Service/The Fact Co., Winston Smith, (WIPO Case No. D2010-0248) (9 April 2010).


The Complainants were the ‘sons and heirs” and represented the estate of the late Dr. Turkan Saylan, who was their mother and a well-known humanitarian and author in Turkey. Her prime work, for which she was honoured, was in the eradication of leprosy in Turkey. The sons were seeking transfer of three domain names all of which incorporated the name of Dr. Turkan Saylan, such as <turkansaylan.com>. The domain names reverted to either blank landing pages or to a page referencing Dr. Saylan.


As the complainants did not have a registered trademark they had to prove a common law one.


The panel discussed the general issue of personal names where it was sought to claim that they were unregistered trademarks and rightly determined that the answer to that issue would depend on the evidence adduced. The panel came to the conclusion that there was not sufficient evidence in this case to show the fame of Turkan Saylan or that her name had been used in a commercial sense. Hence the panel would not find that a common law trademark had been established.


The panel summarised that view by saying:

“The Panel is not necessarily of the opinion that commercial exploitation is the only mechanism by which an aggrieved party can successfully assert common law trademark rights under the Policy. In this case however, the Complainants have not sufficiently evidenced any alternative. With that in mind, the Complainants point out that Dr. Saylan was an author and produce links to a number of her works. What has not been evidenced, is how widespread and recognized Dr. Saylan’s works were and whether any consequent reputation has been associated with Dr. Saylan’s use of TURKAN SAYLAN in commerce. Based on the above, the Panel does not find that the Complainants have made an appropriate case with respect to evidencing that a secondary meaning has been associated to Dr. Saylan’s personal name that rises to the level of common law trademark.”


As had several times been pointed put in cases such as Israel Harold Asper v. Communication X Inc., (WIPO Case No. D2001-0540); Kathleen Kennedy Townsend v. B.G. Birt, (WIPO Case No. D2002-0030), fame was not enough, for: “As was stated in the Jerry Falwell case, the fact that “the complainant has acquired a certain fame in the United States is without question. However, this kind of fame is not cognizable under the Policy”. The Reverend Dr. Jerry Falwell and the Liberty Alliance v. Gary Cohen, Profile.net and God.Info (WIPO Case No. D2002-0184). The Panel is of the opinion that a similar logic applies here.”


There was another warning for young players in the decision, namely that “There is no clear proof that the Complainants are the sole beneficiaries of the estate of Dr. Saylan.”


Practitioners should therefore make sure in such cases that they produce proper evidence of such standing.