Until Certplex, Ltd. filed a complaint against respondent Hasham Malik / NextAge, the two entities had used their domains concurrently for 13 years with no conflict. Given that the complaint ended in a denied transfer of the domain name braindumps.biz, it seems that the Complainant should have left well enough alone.
The complainant, a US company, owns a 2013 registration of the trademark BRAINDUMPS for computer certification exam preparation courses and claims that it has common-law trademark rights dating back to 1997. It has also used the domain braindumps.com to promote its services since 2001.
Since 2002, the Respondent has also sold materials and services relating to computer certification tests – answer keys, interactive tests, and the like. The Respondent has asserted that, as a resident of Qatar, it had no knowledge of the existence of complainant or its claimed common-law mark. In any case, the respondent claims the term “brain dump” is generic for transferring information from one person to another.
The Panelist agreed that the Respondent registered the generic term in good faith and held that “[h]ere, given the arguably generic nature of the word ‘braindumps’ and Respondent’s long use, the Panel cannot find that the initial registration was in bad faith when that registration occurred thirteen years ago, and the mark held by the Complainant was not issued until just a few months ago.”
The Panel addressed Respondent’s laches (delay) defense only by saying that “[b]ecause the application of the doctrine of latches is unnecessary, the Panel would only point out that the Panel’s decisions concerning ‘rights in the name’ and ‘bad faith’ are based upon Complainant’s failure to act to protect its rights for approximately thirteen years.”
I feel that the Complainant’s delay in bringing this action may have been completely irrelevant here. As the Panelist notes, it appears that the respondent, in a geographically distant location, had a good faith intent to start a business under the Brain Dumps name from the very start: The passage of so many years has only reinforced this point, but the point itself remains. If the Complainant had filed an action soon after the braindumps.biz domain was first created, it’s unlikely the decision would have looked any different.
However, if the braindumps.biz domain resolved only to a pay-per-click site with links to random businesses, it’s entirely possible that this case might have gone the other way.
UDRP panels have become more willing to consider a laches defense where the passage of time is not the only factor. However, since it’s still a developing area and panelists are generally reluctant to apply the defense, the Panelist in this case likely deferred on the issue since he had other factors upon which to base his decision.
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