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Application of Equitable Bar for Not Acting Timely on Infringement

There is a strong consensus that a complainant’s demand for transfer of a domain name that is identical or confusingly similar to its trademark for which the respondent lacks rights or legitimate interests is not barred by the equitable doctrine of laches. This is consistent with the recommendation in the WIPO Final Report that “a time bar to the bringing of claims 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.”

Panelists in the formative decisions adopted a “no room for general equitable doctrines [view] under the Policy such as would be possessed by courts in common law jurisdictions,”, Inc. v. Ult. Search Inc., D2001-1319 (WIPO February 1, 2002). However, the consensus is not without qualification. Dilatoriness has consequences. A good illustration is The Economist Newspaper Limited v. TE Internet Services, D2007-1652 (WIPO February 5, 2008) where the Complainant waited 11 years to commence the proceeding.

It was always understood that the greater the period elapsing between domain name registration and commencing a proceeding the harder it would be for a complainant to prove bad faith registration. This view drew a distinction between laches as a defense and lapse of time as a disabling fact of proof. At the same time, other panelists questioned the consensus for disallowing the defense. Why (they asked) should it not be a defense? This heterodoxy appears first to have been articulated by a dissenting panelist in 2009. Vanguard Trademark Holdings USA LLC v. Nett Corp., FA1262162 (Nat. Arb. Forum July 26, 2009) (9 years, but the domain name was identical to the trademark). It reappeared in a unanimous 3-member Panel decision in the following year without reference to the dissenting analysis. The New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010) (not apparently influenced by the Vanguard dissent). In this Panel’s view, laches “should be expressly recognized as a valid defense in any domain dispute where the facts so warrant.” The Panel continued that there appears to be no “sound basis for ignoring the potential defense.” In other words, a trademark owner can be defeated where there has been a significant passage of time coupled with a plausible explanation for registering the domain name. The New York Times waited 6 years (common law trademark).

While not generally endorsed, the contra view “has gained a foothold.” So notes the Panel in Mars, Incorporated v. Ben Chen, FA1109001405770 (Nat. Arb. Forum October 17, 2011) who decided that the defense did not apply in this particular case. The Respondent argued that since he was known in the family as “Uncle Ben” and had owned the domain name for 12 years he had a right or legitimate interest in it. Sobriquets have had a mixed history, but there are a couple of dotty cases holding in Respondent’s favor, “[Mr.] Penguin” and “Mrs. Jellibee” that I will pass over at this time, but not to be forgotten.

Despite Vanguard and The New York Times, the Panel in Mars did not find “Uncle Ben” a good candidate for an alleged “noncommercial or fair use” defense. She held

Whether the panel in The New York Times case was describing laches or promissory estoppel is a question for another time, but what is clear is that equitable relief, which was for a very long time dismissed as inappropriate in administrative proceedings under the Policy, now seems to have gained a foothold. Nonetheless, as with all equitable remedies, application will be discretionary and each case will have to be determined on its own individual facts.

Dilatoriness depends on the factual circumstances of each case. Offsetting the view that “[an] inordinate delay in bringing the complaint makes any claim of use in bad faith unsustainable” is a finding that “periodic display[s] of offending links haphazardly amalgamated with elements of personal use of the domain name” permit a conclusion that the Respondent chose as its sobriquet and registered a domain name identical to the Complainant’s trademark in bad faith.

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