The need for evidence to prove a common law trademark and the difficulty of doing so has arisen again, but in an unusual context. On this occasion it was relevant not to show that the Complainant had a trademark for the purposes of Paragraph 4 (a)(i) of the UDRP, but whether the Complainant had shown that the Respondent did not have a right or legitimate interest in the domain name.
If the Complainant could show common law rights, it would defeat the rights relied on by the Respondent arising from its own registration of a trademark in the same name as the domain name and relied on to show the Respondent’s legitimate interests in the domain name. Could the Complainant show the common law rights relied on? The panel answered this question by saying:
“Usually (but possibly not always), this will require demonstration of a reputation arising from use. Typically, this will be established by evidence of sales and advertising or other promotional activity in the jurisdiction. …, the Complainants point to the evidence of a single sale to a customer located in South Australia in 2002. The Response put this claim squarely in issue. In their Supplemental Filing, the Complainants contend that they have been using the trademark continuously in Australia and throughout the world through their online website since its creation in 2001.
The fact that a website is accessible from Australia is not in itself sufficient to establish that it is being “used” in the relevant sense here or has developed a reputation with the Australian public: 1-800 Flowers Inc v Phonenames Ltd  F.S.R. 697 at 704–706 affirmed  F.S.R. 191; Ward Group Pty Ltd v Brodie & Stone plc  FCA 471 per Merkel J.
The evidence of a single sale in October 2002 to a single customer falls well short of what is required to demonstrate a reputation at common law in a relevant part of Australia. There is no evidence before the Panel of how many “hits” there have been from Australian customers on the Complainants’ website or otherwise purchasing products or services from the Complainants. There is also no evidence of advertising or other promotional activities actually conducted in Australia or otherwise directed at potential Australian customers.
In these circumstances, the Panel cannot find that the Complainants have demonstrated sufficient reputation in Australia to found common law rights which would provide a basis for superior entitlement to the disputed domain name to the Respondent’s claim based on the Australian registered trademark.
Accordingly, the Complainants, on the record in this proceeding, have not made out the second requirement under the Policy.”
Another salutary reminder of the importance of hard evidence to show common law rights.