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After considerable exposure to the world of UDRP complaints during my time at FairWinds, I have seen the issue of laches arise time and again. Such was the case in a recent UDRP complaint I came across, in which Novartis AG attempted to recover the domain name clearcare.com. Unfortunately, the Complainant was unsuccessful in its attempt and the National Arbitration Forum (NAF) three-member Panel decided that the domain name should remain with the Respondent, Name Administration Inc.

Here are some of the key facts: The Complainant owns a trademark registration for the CLEAR CARE mark and uses it in the sale of a contact lens cleaning product. On the other hand, the Respondent is a well-known domain investor who picks up expired domain names and then resolves them to PPC pages with links related to the generic terms they may contain. The clearcare.com domain name was acquired by the Respondent in 2005 and resolves to a PPC site with links relating to the word “care”, but none of them specifically relate to eyes or contact lenses.

This was an important detail that helped save the Respondent from losing the domain name. As the Panel notes concerning legitimate interest: “Respondent’s use of the <clearcare.com> domain name is a protectable … bona fide offering of goods, namely an offering of non-competitive related goods vis-à-vis hyperlink advertisements”. On the topic of bad faith, the Panel stated: “the Panel finds that Respondent’s use of the domain name for purposes of an unrelated hyperlink directory cannot rightfully constitute … bad faith”.

However, the most damning factor against Complainant was the laches (delay) defense raised by the Respondent. On that subject the Panel had this to say: “It appears to the Panel that any business disruption or confusion suffered by Complainant as a result of Respondent’s domain name registration was either non-existent or de minimis, else Complainant would have taken action in a more timely fashion.” While the generic nature of the hyperlinks on the website certainly were a factor here, it seems that the coup de grâce was that this Panel just couldn’t ignore the Complainant’s delay in filing its complaint to recover the domain name. At this point the Complainant can either take the matter to court (possibly in the British Virgin Islands?) or just pay a princely sum to buy the domain from the Respondent.

Either way, the clear message to brand owners is to prioritize your enforcement targets and then pursue the most important ones without delay.

Steve Levy

Steve Levy

Senior Advisor at FairWinds Partners
It can be difficult tackling domain name and social media infringement without the right expertise. Steve covers UDRP cases, URS cases, and all other acronyms and topics related to cybersquatting and usersquatting.
Steve Levy
All Bad Things Come To Those Who Wait – Laches and the UDRP

2 thoughts on “All Bad Things Come To Those Who Wait – Laches and the UDRP

  • May 5, 2014 at 9:17 am
    Permalink

    Hi Steve,

    What’s unfortunate about a company failing in its effort to use the UDRP to steal a domain that is based on a non-distinctive term and that is being used in a non-infringing way?

    NameAdministration is using the ClearCare.com domain with a focus on “care” which is a fair use of the “ClearCare” term. This is similar to the non-infringing use of ClearCareOnline.com by this home care company – http://clearcareonline.com/.

    Good reporting, but an unfortunate use of the word “unfortunately”.

    Regards,

    Nat Cohen

    Reply
    • May 5, 2014 at 9:51 am
      Permalink

      Thanks for your comment, Nat. I agree with you that, if a term is used in a non-distinctive, generic way (such as could be done with words like “apple”, “mustang”, “staples”, etc.) and there’s no infringing website content, the case may well be a loser for the brand owner. Here, however, although each component word might have a generic meaning, as a complete phrase “clear care” is not commonly used or understood in a generic way and is a distinctive trademark. The other ClearCare company whose URL you list (and others one can find through a quick online search) may each have trademark rights to the phrase just as multiple companies use the brand Delta for different products and services. That seems to have been a major factor in this decision since there were no links at the clearcare.com site relating to the Complainant’s contact lens products.

      Reply

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