Laches or delay in bringing the proceeding may well be an absolute defence to the claim. In the past, many parties who have registered domain names and used them for years, in some cases for over 10 years, have had them taken away at the behest of a trademark owner who had taken no action for the whole of that time and who, at the end of that long period of inactivity, eventually brought a claim after such a long delay. Domain name registrants have protested and claimed that the delay was unfair and should bar the claim. Generally, their argument has failed. But in this decision it succeeded and, according to the panel, laches is “a valid defence in any domain dispute where the facts so warrant.“
The case is The New York Times Company v. Name Administration Inc. (BVI), (NAF case no. FA1009001349045) (November 17, 2010).
The Complainant relied on 2 trademarks for DEALBOOK, registered with the USPTO in 2008 and 2010. However, the domain name <dealbook.com> was registered in 2004, so the Complainant had to rely on a common law trademark going back to before 2004 and, as it alleged, to 2001. The Complainant’s evidence to support the common law trademark was drawn from recent times, but not from the period between when the trademark allegedly began and the time the domain name was registered.
As the panel said:
“While Complainant has provided some information on the nature and extent of advertising, no other factors have been shown to indicate that the general public, including the Respondent, knew or should have known of Complainant’s alleged rights in the DEALBOOK mark from 2001-2004.”
That was virtually the end of that, for, although the Complainant had established a common law trademark, it was of little value, coming into existence subsequently to the domain name being registered and “…the Panel does not believe that the intent of the Policy requires a Panel to move forward on a complaint when the Complainant’s rights in the disputed domain name are at best junior to the rights of the Respondent.“
As the Complainant had clearly failed, the panel was not disposed to address other issues that had arisen in the proceedings. There was, however, one issue the panel took the opportunity of dealing with and that is the real point of this decision. That was the issue of laches or delay on the part of the Complainant in bringing the proceeding.
The panel’s conclusion:
“The Panel believes that the doctrine of laches should be expressly recognised as a valid defence in any domain dispute where the facts so warrant. Prior decisions rejecting the applicability of the doctrine due to the failure of its express recognition in the UDRP Policies appear to be an unsound basis for ignoring the potential defence.“
The panel made the point forcefully: the Respondent had held the domain name for over 6 years and during that time it had not sat on it, but had used it to develop its web business. In contrast, the Complainant had done nothing to assert its rights.
In those circumstances, the panel’s conclusion is irresistible:
“Where such a Complainant fails to police its claimed mark and does nothing for a substantial time while a Respondent develops an identical domain name for its own legitimate purposes, laches should bar that Complainant from turning a Respondent’s detrimental reliance to its own unjust benefit.“
Some other points may be made. First, in its reasoning, the panel rejected what has long been used in some UDRP decisions as the reason why laches is not a defence, namely that UDRP proceedings are administrative and look to the future, whereas laches is an equitable defence.
But as the panel points out, “…the practical effect of the proceeding is to provide equitable relief to the successful party. Thus, if relief is the outer extent of the remedy available equitable defences should also be considered in evaluating the whether any relief should be forthcoming.“
Secondly, this is a substantial change. Like some others, I had been drawing attention to the disturbing delays that had occurred in bringing some UDRP cases and suggesting that it was time to look at the idea of allowing delay or laches as a defence : for example: Board of Trustees of the University of Arkansas v. FanMail.com, LLC., (WIPO Case No. D2009-1139) (November 2, 2009) (8 and then 5 years); Charter Communications, Inc. v. CK Ventures Inc. / Charterbusiness.com, (WIPO Case No. D2010-0228) (June 25, 2010) (7 years); and Open Society Institute v. Gil Citro, (NAF case no. FA1007001333304) (August 24, 2010) (8 years). I had also written on the subject in Managing Intellectual Property, 12 July 2010. The prevailing view, however, remained that laches was not available and there have been recent cases where panels have declined to entertain the laches defence. The decision in The New York Times Case, however, has now established that in appropriate fact situations, laches is available as a defence and may defeat the trademark owner’s claim.
Finally, it should not be assumed that the laches defence will succeed whenever there has been a delay by the Complainant in bringing proceedings. Each case will have to be determined on its own individual facts; circumstances such as what, if anything, the Complainant had done to protect its brand, the use of the domain name by the Respondent, the degree of sophistication of the Complainant in internet matters and the overall fairness of a finding for either party will have to be taken into account.
But what is certain is that, from now on, UDRP proceedings where the defence of laches has been raised, will be much more interesting and significant debates.