A complainant’s unexplained delay in prosecuting a claim under the UDRP is not generally prejudicial to its relief, except where in the interim “the lapse of time coupled with the existence of circumstances … make it inequitable to enforce a claim,” Pamela Anderson v. Alberta Hot Rods, D2010-1144 (WIPO September 8, 2010). This is an elementary principle, but 13 years calls for an explanation. The existence of circumstances must necessarily be taken into account, as it is, for example, when the respondent proves a defense under paragraph 4(c)(i) of the Policy: “before any notice to you of the dispute, [you have] use[d] … or [made] demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
In Pamela Anderson the majority rejected the respondent’s “circumstances” argument; the dissent did not and this raises an interesting issue about unexplained (lengthy) delays. The dissenting panelist in Pamela Anderson and other decisions has been pressing his colleagues to reconsider their view about the application of laches to a UDRP proceeding. But so far his is a voice in the wilderness. He states that “unexplained delays … should be taken into account.” That view, however, is not controversial. He even agrees with the majority if I put back in the language that I left out: “during which rights have been allowed to accumulate.” The difference is that the majority has one view of the circumstances and the dissent another.
The dissent points out that there is a genuine issue as to whether “Pam Anderson” is confusingly similar to “Pamela Anderson,” although (as he concedes) the complainant met the “generally applied test for determining if a celebrity has acquired a common law trademark.” The real focus in terms of “circumstances” (raising, as it were, a triable issue) is whether the Respondent had rights or legitimate interests in the domain name. The Respondent’s paragraph 4(a)(ii) rebuttal argued that although the domain name was currently inactive it had “used the disputed domain name in connection with various websites in the past.” Exactly what proof the Respondent offered for past use is murky and clearly inadequate, but a website featuring “biographical information about various famous personalities, dead or alive” is not improbably making a bona fide offering of services.
On this issue, the majority found that the “unsupported arguments of the Respondent do not suffice to rebut the Complainant’s prima facie case, let alone positively establish rights or legitimate interests under the Policy.” Indeed, the dissent appears to recognize this problem: “if the Respondent’s proof is inadequate, that has been brought about by the inordinate delay of the Complainant in bringing this claim, a delay that she has not explained, despite the issue’s having been squarely raised in the Response.” However, it does not appear that the Respondent submitted any historical snapshots of the website or make any attempt to support its argument for a right or legitimate interest. The absence of proof a party would be expected to offer supports an inference that it has none. The Respondent’s history of cybersquatting does not help its credibility; its denials therefore have less weight.
Nevertheless, the dissent’s point is not without merit. “Pam” is not “Pamela” and the Complainant’s trademark is for PAMELA ANDERSON not “Pam Anderson.” More importantly, on the paragraph 4(a)(ii) and (iii) requirements, an explanation for the delay is not unreasonable burden in weighing the parties’ rights. “If it is difficult for the panel to be conclusive about the issue [of bade faith] in the light of what has happened in the last 13 years, as it is, that result has been brought about by the delay itself and the delay has been occasioned by the Complainant. In those circumstances, any doubt on the issue of the legitimacy of the disputed domain name should be resolved against the Complainant.” Resolved against the Complainant because it is she who has the burden of proof that the domain name was registered in bad faith.
Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com