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Dialogue and Debate in the Development of UDRP Jurisprudence

UDRP jurisprudence did not come ready made. Panelists assembled it from readily available legal and cultural artifacts, and it grew (among other ways) through the friction of dialogue and debate. An example of this has been observed in earlier Notes discussing the Octogen line of cases advocating “retrospective bad faith.”  The dialogue or debate has advanced to the conclusion (if I’m not being premature) that the new construction advocated appears to be a dead-end. The Panel in India Infoline Ltd. v. Myles Hare, D2010-0542 (WIPO June 16, 2010) noted that these cases “have not been generally accepted by panelists within UDRP jurisprudence.”

In one of the earliest cases in the canon, J. Crew International, Inc. v. crew.com, D2000-0054 (WIPO April 20, 2000) the majority granted Complainant’s request for transfer of the domain name <crew.com>, apparently under the influence that Respondent was “a speculator who registers domain names in the hopes that others will seek to buy or license the domain names from it.” Speculation and trade in domain names, however, is not condemnable.  The dissent’s view was more on target and has prevailed. “In my judgment,” (he said)

the majority’s decision prohibits conduct which was not intended to be regulated by the ICANN Policy. This creates a dangerous and unauthorized situation whereby the registration and use of common generic words as domains can be prevented by trademark owners wishing to own their generic trademarks in gross. I cannot and will not agree to any such decision, which is fundamentally wrong.

He was prescient in stating that “[w]here the domain name and trademark in question are generic, and in particular where they comprise no more than a single, short, common word, the rights and interests inquiry is more likely to favor the domain name owner.”

Dialogue and debate is also apparent in Visual Systems, Inc. v. Development Services Telepathy, Inc., FA1004001318632 (Nat. Arb. Forum June 25, 2010). Although not determinative, the parties raised the issue of laches, with the Respondent advocating it and the Complainant denying its applicability. The Panel was unanimous in finding for the Respondent for its registration of <cygnet.com>. “Cygnet” is a common word in the English language meaning a “young swan.” One of the panelists filed a separate opinion to discuss the issue of laches. The consensus is that laches is not applicable in a UDRP proceeding, but not all panelists are entirely comfortable in its not being available as a defense. Delay, after all, is a factor in determining a right or legitimate interest under paragraph 4(c)(i) of the Policy. The separate opinion took the view (citing Board of Trustees of the University of Arkansas v. FanMail.com, LLC, D2009-1139 [WIPO November 2, 2009] in which he was a member)

that whether the delay is properly characterized as laches or not, the considerable delay on the part of Complainant in bringing the Complaint militates against its success in this proceeding…. Such an extreme delay calls for some explanation. Although Respondent’s attorneys squarely raised the issue in correspondence and in the Response and relied on it as a defense, and although Complainant filed a Supplementary Reply to the Response and had an opportunity to explain its delay, it did not do so and did not put forward any facts to explain either the delay or the consequences that Respondent sought to draw from it.

Where the respondent raises the issue of delay and the complainant submits a supplemental response without explaining itself, it fails its burden. “All of that being so, it is reasonable to conclude that there should be more debate on recognizing laches, or at least unexplained delay, as a defence to a UDRP claim.”

Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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