A lengthy delay in filing a Complaint may suggest a lack of bad faith use by the Respondent
SageNet LLC v. Hill, Randy
Claim Number: FA1910001865122
November 8, 2019
The Doctrine of Laches, as an equitable defence, rears itself only occasionally in UDRP disputes. However, it does so with enough frequency to deserve a closer investigation of what it actually means, and how it applies in practice to UDRP disputes. While past UDRP panels have been eager to state that the Doctrine of Laches is not a defence in itself, Complaints have certainly been hindered by unexplained long delays in bringing their cases forward. In the following case, in which a relatively unsubstantiated Complaint lost, we can see how the Doctrine of Laches can serve to weaken a claim, and ultimately contribute to its downfall.
The Doctrine of Laches refers to a defence used when a party is believed to have unreasonably delayed making a claim. In delaying such a claim, the Doctrine alleges that the because circumstances surrounding the claim may have changed, going forth with the claim is no longer a just or equitable resolution, because the delay itself prejudices the defending party. In the UDRP cases in which the Doctrine of Laches does make an appearance, Panels are quick to remind the parties that the doctrine is not a defence in and on itself. However, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in a domain name, and whether it is using the it name in bad faith. For example, the absence of a complaint over a long period of time may suggest that the Respondent’s use of the website is not damaging to the Complainant, implying that the Respondent has not been acting in bad faith.
This principle was a key feature of a recently failed case brought by the American technology company SageNet, who sought transfer of the disputed domain name <sagenetcom.com>. The Complainant alleged that the Respondent, an American individual who used the domain to run his technology company Sage Network & Communications was acting in bad faith, because it used the domain name to disrupt the Complainant’s business and create consumer confusion, and was trading on the reputation of its SAGENET trademark.
However, with regards to the second and third elements, the panel noted that the Complainant failed to provide any evidence to support its assertions. On the other hand, the Respondent was able to substantiate its claims that even despite the vague similarity of the domain to the Complainant’s trademark, it was both running a legitimate business a legitimate business at the disputed domain and was also commonly known by that domain. In addition, the Respondent was able to demonstrate that it was in business for over 17 years, and had used the domain for at least three, which in itself suggested to the panel that the Respondent’s use had not given rise to a serious problem to the Complainant and its business. As such, the second and third elements were found in favour of the Respondent and the Complaint failed.
In addition to the Doctrine of Laches and the lack of evidence, an important third point was raised in this case: whether the domain in question was actually confusingly similar to the Complainants marks. While domain names that feature a complainant’s mark plus a generic term are usually found to be confusingly similar, confusing similarity is considered in light of the trademark and domain’s wider context, qualities as generic terms, and pronunciation. In determining this element, the Panel found that the “analysis of similarity must be made between “SAGENET” and “SAGE NETCOM”.” While both marks consisted of the generic term sage, and were by no means identical, for the purposes of the policy they were deemed similar “to a certain degree” and the case was allowed to continue. While the first element of the policy is generally considered merely a standing requirement of the UDRP, the Complainant’s success here is not a given.
Despite the short-lived success, it is clear that the Complainant was severely hindered by its lack of evidence, as the unexplained delay in bringing its case. UDRP disputes are always decided upon the evidence before the Panel, and if one is to have any chance of succeeding, assertions must be substantiated. The Doctrine of Laches by itself is certainly no comprehensive defence, but when such issues arise and remain unexplained by the Complainant, it can certainly create enough doubt in the Panel’s mind to tip the balance of probabilities toward the respondent.
 For example, see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003)