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The Problem of Waiting Too Long

A long line of decisions holds that laches is not applicable to a UDRP proceeding, but waiting too long to assert a claim weakens the complainant’s case. The majority in Board of Trustees of the University of Arkansas v. FanMail.com, LLC., D2009-1139 (WIPO November 2, 2009) noted that “the considerable delay in bringing this case does color the merits of the dispute.” Although stopping short of finding that laches applied, it nevertheless 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.”

The possibility is based on a reading of paragraph 15(a) of the Rules which states that “a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” This view “is not unreasonable … given that, in many if not most jurisdictions in the United States and in countries such as the United Kingdom and Australia, the formerly sharp line between law and equity has been blurred if not effaced by the amalgamation of law and equity. Indeed, it would appear unlikely that when they used the expression “principles of law that it deems applicable,” those who drafted the Rules meant “principles of law but not equity.”

Lapse of time works against the complainant if in the interim the respondent has either gained a right or interest in the disputed domain name or so much time has elapsed without explanation that the complainant’s allegation of abusive registration is undermined. “[T]he longer the time between the registration of a disputed domain name and the assertion of the Complainant’s rights the harder, in general, the inference of bad faith registration becomes to sustain,” YIT Corporation v. Future Media Architects Inc., D2007-0588 (WIPO July 27, 2007). Past decisions generally focus on respondent’s defense under paragraph 4(c)(i) of the Policy that it has acquired a legitimate interest in the domain name by through bona fide use “before notice of the dispute.”

In Board of Trustees of the University of Arkansas Respondent registered <razorbacks.com> in 1995. One panelist who joined the majority to express the heretical view about laches, stepped back from applying it in this case, although his colleague would have done so. The third member of the Panel then joined the first in rejecting a laches defense because the “Respondent did not present any hard evidence of prejudice it suffered as a result of Complainant’s considerable delay.” The (new) majority held that

although there may be no evidence of actual financial prejudice suffered by Respondent and although the whole matrix may not be properly characterized as laches, in Panelist Brown’s view, the delay and lack of explanation for it strengthen Respondent’s case for a right or legitimate interest in the Domain Name and negate Complainant’s case that the Domain Name has been used in bad faith. That is so because the unchallenged evidence is that Complainant by inactivity encouraged Respondent to continue to use the Domain Name in the way in which Complainant knew it was being used.

The shifting majority notwithstanding all three members of the Panel agreed that the Complainant failed to sustain its burden of proof that the Respondent lacked a legitimate interest in the domain name which it was using in its vanity mail service. Also, “razerbacks” is not exclusively associated with the Complainant; for some, it “is just a hog”.

Gerald M. Levine, <udrpcommentaries.com>

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