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Complainant’s Failure to Police Its Trademark Over a Prolonged Period of Time

Mere delay by a trademark holder in claiming abusive registration is not barred by the doctrine of laches, although this is not without qualification. Paragraph 197 of the WIPO Final Report “recommended 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.” In fact, a “time bar” was rejected in a coda to “Time Limitations for Bringing Claims.” Panelists in the formative decisions adopted this view and held that “there is no room for general equitable doctrines 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, this view has progressively eroded to a point where the question now is, Why not a laches defense?

One step down from “no room for general equitable doctrines” is the view that laches should be available “in particularly compelling sets of facts.” The most outspoken panelists hold that it “should be expressly recognized as a valid defense in any domain dispute where the facts so warrant,” 3-member Panel in The New York Times Company v. Name Administration Inc. (BVI), FA1009001349045 (Nat. Arb. Forum November 17, 2010). According to the New York Times Panel there appears to be no “sound basis for ignoring the potential defense.” This view is endorsed in NaturaLawn of America, Inc. v. Jeff Edwards, FA1102001372111 (Nat. Arb. Forum March 16, 2011) and even though the Panel decided the case on substantive grounds it is nevertheless an important marker along the way to acceptance of a laches defense. NaturaLawn initially put the Respondent on notice in 2002 and only commenced the proceeding in 2011.

The Panel leaves no doubt that if the Complainant had succeeded on the threshold test it would have failed on the defense of laches. The substantive grounds for dismissing the complaint in NaturaLawn, however, is that the Complainant failed to prove that the domain name <> was confusingly similar to NATURALAWN OF AMERICA, NATURLAWN and NATURALAWN. Where there is more than one trademark, the question is which of them (if not all) is the one infringed. In NaturaLawn of America it could not be the first of the trademarks because

[a]n objective bystander, comparing the domain name with the mark would, on the balance of probabilities, conclude that the domain name is invoking a generalized concept of natural lawns, meaning lawns cultivated and maintained by natural means, whereas the mark is invoking a specific enterprise that had styled itself NATURALAWN OF AMERICA, which is concerned with natural lawns, but is a specific brand and one that is confined in its operations to the United States of America. Those features are not reflected in the domain name and it is thus unlikely that any bystander would think that the domain name was referring to the same entity as the mark.

For each variation of the other two trademarks the difference is minor but (as has been pointed out in many UDRP cases) “small differences” matter. The difference between “naturallawns” and NATURLAWN is an addition of an “a”, and “l” and an “s”; between “naturallawns” and NATURALAWN an “l” and an “s.” The Panel held that in cases where panels have agreed that additions or subtractions of a letter or two are significant in analyzing confusing similarity it is because the additions or subtractions “have not changed the meaning or colouration of the trademark or changed it in such a way that it sounds or looks like an entirely different concept.” A complainant who has modified common words creates a brand but it cannot prevent others from using the common words in their ordinary sense. Thus,

[i]n the present case, Complainant has apparently either taken the invented word ‘natura’ and added to it the word ‘ lawn’, to create a brand or trade name of Natura Lawn or compressed the two words ‘ natural’ and ‘lawn’ into one word by omitting the letter ‘l’, thereby creating a brand or trade name Naturalawn. In contrast, the domain name undoubtedly consists of two common words that are descriptive and generic descriptions of the substance known as natural lawn which tell the reader that in the context of the internet it will lead to information about that general subject, namely natural lawn, but not to a brand name.

As a result “consumers and Internet users [will] understand that ‘Natural Lawns’ is a descriptive term referring to lawns cultivated and maintained by natural means, and will not necessarily assume that <> refers to Complainant simply because Complainant owns a the NATURALAWN mark, which covers goods and services produced under that name.”

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