Back in 2009, I wrote a Perspectives article on cybersquatting enforcement in which I brought up the subject of laches. Laches is a legal doctrine that can provide a defense when an adverse party has unreasonably delayed in asserting its rights, and its reliance on that delay results in harm to the defending party. In other words, it is said that he who “sleeps on his rights” may be barred from asserting those rights if he does not do so in a timely manner. What constitutes timely depends on the circumstances of the case and the actions of the defending party.
The laches doctrine is not specifically recognized in the Uniform Domain-Name Dispute-Resolution Procedure (UDRP). However, the issue was raised by the Panel in a recent dispute: The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. FA1009001349045 (2010). Here, The New York Times (NYT) sought to claim the domain DealBook.com from its current owner. The Respondent had registered the domain in 2004, before the NYT had registered the term “DEALBOOK” as a trademark; the NYT claimed that it possessed common law rights in the term dating back to 2001, but did not register the mark until 2006.
It is very common in UDRP decisions for the Panel to decide in favor of the Respondent when his or her registration of the domain predates the Complainant’s registration of the trademark. In this case, however, the Panel expressly stated that the NYT’s failure to police its mark and do nothing while the domain owner used the domain name, albeit as a pay-per-click (PPC) website, for over six years, created a likely laches defense which should bar the NYT from reclaiming the domain from the owner. The case was ultimately decided in favor of Name Administration Inc. on different grounds (the Panel determined the domain was registered prior to the creation of the NYT’s trademark rights) but it opens the door for future respondents to assert the defense in a way that may not have been possible under prior UDRP precedent.
In the Perspectives, I pointed out that the laches defense rarely appears in UDRP arbitration. That remains true. In the majority of cybersquatting cases, the domain owner does not even attempt to defend his or her actions, let alone invoke a nuanced legal doctrine. However, in the NYT case, it was not the Respondent but the Panel that raised the issue of laches. It will be interesting to see if future Panels begin taking the doctrine into consideration if brands delay in enforcing against PPC or other types of cybersquatted sites.
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