Application of laches for sleeping on one’s rights would bar the complainant’s claim even though the respondent’s registration was and its use is in bad faith. But, this is too draconian. If the defense is warranted at all it must be limited to the right circumstances. In an essay published in July 2010 in the on-line magazine Managing IP as well as in a number of UDRP decisions the Hon. Neil Anthony Brown, Q.C. noted “welcome signs that UDRP panelists are starting to take delay into account … [even though they] generally [have] not yet been willing to adopt laches as a defence by name.” There is certainly a degree of ambivalence. As an affirmative defense the penalty for waiting too long is already available under paragraph 4(c)(i) of th Policy. However, the laches that Mr. Brown is talking about dwells on historical circumstances shared by the parties. This was the case in Open Society Institute v. Gil Citro, FA1007001333304 (Nat. Arb. Forum August 24, 2010) in which he filed a separate decision.
Mere delay by a trademark holder in claiming abusive registration is not a bar to capturing an infringing domain name, although this is not without qualification. Where, for example, the respondent has used (or passively held) the domain name for many years under the radar, Why should the complainant be barred from asserting a claim? While laches is not a good defense against purposeful infringement, inordinate delay falls in a different category. After all, failing to take timely action may indicate that the complainant did not truly believe respondent had engaged in bad faith registration.
In UDRP’s beginning, panelists took the view that “there is 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). In any event, noted the Panel in National Football League v. Alan D. Bachand, Nathalie M. Bachand d/b/a superbowl-rooms.com, D2009-0121 (WIPO April 20, 2009) “Respondent would be ineligible for relief under an equitable doctrine such as laches because of Respondent’s own “unclean hands” (another equitable concept).” While “[c]ontinuous use adverse to the interest of Complainant is not a basis from which Respondent can acquire rights in the domain name,” Avaya Inc. v. Holdcom, FA0806001210545 (Nat. Arb. Forum August 9, 2008) (excusable delay), “considerable delay in bringing [a] case does color the merits of [a] dispute,” Board of Trustees of the University of Arkansas v. FanMail.com, LLC., D2009-1139 (WIPO November 2, 2009) (inexcusable delay). Although the Panel in Board of Trustees stopped short of finding that laches applies, the majority uttered a heretofore heretical thought, namely that it was “prepared to acknowledge the possible applicability, in appropriate and limited circumstances, of laches in a case under the Policy.”
Nevertheless, the running of time (and the more it runs) plainly creates a palpable tension. In his essay Mr. Brown cites Ormsby v. Barrett, CV07 5305 (W.D. WA 2008) for the proposition that failure to assert a claim in the face of known trademark infringement can result in a loss of trademark rights under the doctrine of laches. Ormsby transposed to a UDRP claim, however, is no more than finding bona fide use “before any notice of the dispute.” A distinction is warranted between an excusable delay (under the radar) and an inexcusable one. Excusable delay is not a bar to capturing the domain name; the second is. Of the second, there are three types. Type 1 is encapsulated in paragraph 4(c)(i) as an affirmative defense – that is, the respondent prevails because in the interim it has developed an identity as a business based on the mark. Type 2 is a finding under paragraph 4(b)(iv) of the Policy that the complainant is short of proof that there is a “likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Type 3 is the argument that under certain circumstances laches should be available as a defense. One of the two heretical thinkers in the Board of Trustees case (in fact Mr. Brown himself) emerged again in a minority opinion (writing separately but concurring in the result to deny the complaint) in Charter Communications, Inc. v. CK Ventures Inc. / Charterbusiness.com, D2010-0228 (WIPO June 25, 2010). Mr. Brown observed that “it may be time for a closer examination of that issue and whether it is appropriate to exclude it as a defence in cases where the complainant has waited years before filing a complaint,” citing Board of Trustees of the University of Arkansas in which the 3-member Panel (that included Mr. Brown). He “felt that there is scope for looking again at the assumption that laches has no part to play in UDRP proceedings.” Panelists are clearly prepared to take this step; in fact, some have already done so. Take for example a truly iconic trademark THE ECONOMIST. The Complainant waited over 11 years to commence the proceeding and lost, The Economist Newspaper Limited v. TE Internet Services, D2007-1652 (WIPO February 5, 2008) (<theeconomist.com>) (written by another Q.C., Hon. Sir Ian Barker).
Mr. Brown enlarged on his view again in Open Society. In that case, as the Panel did in Board of Trustees, he emphasizes how having a history can support a laches defense. History puts the matter in a light completely different from a “before any notice” kind of dispute. He concluded that the Respondent’s
legitimate interest in the domain name has been strengthened by several other issues that have arisen in the history of this matter. Those matters are: (a) the Complainant has waited 8 years from the registration of the domain name to bring the Complaint, an unsatisfactorily long time; (b) the Complainant offered to buy the domain name from the Respondent, implying that the Respondent had rights in the name he was being asked to sell; (c) it has allowed another domain name in the UK system, <open-society.co.uk>, to remain registered and unchallenged; and (d) it appears to have had limited interest in using an “open society” domain name, as its own domain name, <opensocietyinstitute.org> resolves to www.soros.com, after its distinguished founder.”
Multiple interactions without the Complainant taking action supports a conclusion that it never truly believed that the Respondent’s registration was abusive. Otherwise, it would have acted earlier on the timeline. That it did not supports a laches defense.