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Panels in the formative cases held that there was “no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions.” Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO February 1, 2002). The Panel in The Hebrew University of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO October 7, 2002) held that “[t]here is no limitation period in the Policy.” The view that the “defense of laches ha[d] no application” is consistent with the recommendation in the WIPO Final Report that “a time bar to the bringing s in respect of domain names (for example, a bar on claims where the domain name registration has been unchallenged for a designated period of years) should not be introduced.” Paragraph 197. In fact, a “time bar” was rejected in a coda to “Time Limitations for Bringing Claims.” Paragraph 199. However, it slowly became apparent that a “no limitations” principle was a straight-jacket. It was in obvious conflict with the principle set forth in paragraph 4.10 of the WIPO Overview that longer the delay the more difficult for a complainant to establish its case on the merits. Respondents reach safe harbor – when they do – precisely because there are consequences to delay.
The consequences are recognized in paragraph 4(c)(i) which is an antidote to the “no limitations” principle. It may be remembered that the legal basis for a successful laches defense “requires proof of (1) lack of diligence by the party against whom the defense is asserted, and (2) prejudice to the party asserting the defense.” This matches the evidentiary expectations of 4(c)(i). Avaya Inc. v. Holdcom, FA0806001210545 (Nat. Arb. Forum August 19, 2008). Instead of labeling the defense “laches”, Panels mostly pin safe harbor to the Policy. But, that convention was broken in a 2010 case, although there were forewarnings of it in earlier cases. The Panel in New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010) held that “[p]rior decisions rejecting the applicability of the doctrine due to the failure of its express recognition in the UDRP … appear[s] to be an unsound basis for ignoring the potential defense.” “Unsound” because the “no limitations” principle was never intended to foreclose a respondent’s safe harbor defense under paragraph 4(c)(i). While this heterodox view was not immediately endorsed, and is by no means universally accepted today, the defense “has gained a foothold,” Mars, Incorporated v. Ben Chen, FA1109001405770 (Nat. Arb. Forum October 17, 2011). Complainants succeed only where they can persuasively explain why they delayed filing a complaint.
As a defense, though, Panels are becoming more comfortable in applying laches. We see this in another Avaya case, although in this one Respondent prevailed on a laches theory. Avaya Inc. v. Moayyad Hamad, FA1207001456063 (Nat. Arb. Forum September 14, 2012) (AVAYA and). The Complainant argued and the Panel accepted that the domain name was confusingly similar to its trademark. The only difference is the transposition of “v” and “y”. Against the Complainant was that it had not acted to police its trademark: “Respondents have been in business for six (6) years in a market that Complainant identifies itself as an award-winning, tech enterprise leader in the field.” The Panel noted that sophisticated
trademark owners [are expected to] … careful[ly] monitor … domain name registrations that are identical or similar to their protected marks in the same market of goods and/or services. Such efforts allow the mark owner to immediately bring actions against those who might otherwise seek to cash in on established goodwill by passing themselves off as the trademark owner.
Failing to act, as numerous Panels noted in earlier cases, “[gives] rise to some doubt whether Complainant believed Respondent had been guilty of bad faith in registering and using the domain name [in the first place],” ECCA Enterprises, Inc. v. Eyefinity, FA0905001261978 (Nat. Arb. Forum July 1, 2009). The Panel explained why the Avaya dispute was an appropriate case for a laches defense:
the Complainant was a tech leader in the relevant marketplace yet did nothing for an extended period of time in regards to Respondent’s business, either because of Respondent’s small size, or the difference between Respondent’s domain name and Complainant’s mark, the facts that give rise to a laches defense further support Respondent’s rights and legitimate interests in the disputed domain name.
The Avaya Panel further noted (which supports the idea that panelists are becoming more comfortable with applying the defense rather than applying 4(c)(i)) that “[a]lthough there has been some debate as to whether laches should be an equitable defense in a UDRP administrative proceeding recent Panels have recognized that UDRP proceedings are equitable in nature as they offer equitable relief and therefore laches is a valid defense in appropriate cases.”