A UDRP decided this past week between the New York Times and Frank Schilling’s Name administration regarding the domain name DealBook.com may have been one of the most important decisions for domain holders, as the panel finally fund that the legal doctrine of latches can apply to domain disputes.
The doctrine of laches basically means that someone has to file a timely complaint if they want to object to another parties action
The question is simply.
How can a trademark holder allow a domain owner to register and use a domain for years and year, without complaining, just to wake up one day, find that their “trademark” is suddenly valuable and then go after the trademark holder for infringement
Here are the relevant facts as laid our by the panel:
The Complainant the New York Times, “secured U.S. federal trademark registrations for DEALBOOK on the Principal Register in 2008 and 2010 and asserts the exclusive right to use the mark in connection with the goods and services identified in its registrations.”
“Those registrations indicate multiple dates of first use with the oldest going back to 2001 for use of the mark in relation to providing newsletters in the fields of business and finance via e-mail and providing online newspapers in the business and financial fields. Complainant generally implies that it established enforceable common law rights through its supposed “coining” of the term in 2001 and consistent use of the terms since that time.”
“Complainant argues that it has continuously used the DEALBOOK mark since as early as October 8, 2001 and had thereby developed sufficient common law rights in the mark.”
“In addition to the length of time a common law mark has been in existence, other relevant evidence normally supporting such a claim includes the amount of sales under the mark, the nature and extent of advertising, the level of media recognition, and survey data on consumer awareness.”
“In its Additional Submission Complainant alleges that from 2001-2002 it launched an aggressive advertising campaign about the DEALBOOK offerings which cost an estimated $120,000. Further, Complainant argues that it has since spent over $300,000 more on advertising and marketing its DEALBOOK mark. Complainant notes that in 2007 it won a “Webby Award” for “best business blog” and a “SABEW” award for overall excellence, and an “Eppy” award in 2008 for “best business blog.”
“Further, Complainant submits that more than 160,000 people currently subscribe to the “DealBook” daily newsletter and that the DealBook newsletter now has more than 2.5 million unique monthly users.”
After reviewing the facts the panel found:
“While Complainant has provided some information on the nature and extent of advertising, no other factors have been shown to indicate that the general public, including the Respondent, knew or should have known of Complainant’s alleged rights in the DEALBOOK mark from 2001-2004.”
“”As Complainant was computer savvy regarding internet usage and domain names as well as knowledgeable concerning trademark law, Complainant’s failure to secure and register the disputed domain name or to seek governmental registration of its mark until 2006 supports a conclusion that Complainant did not deem that it had any exclusive rights to enforce until that time.””
“”Thus Respondent’s registration and use in 2004 predate Complainant’s rights in the mark.”
“While registration of a domain name before a Complainant acquires trademark rights is not specifically identified in the UDRP Policy as an automatic defense to a complaint, the Panel does not believe that the intent of the Policy requires a Panel to move forward on a complaint when the Complainant’s rights in the disputed domain name are at best junior to the rights of the Respondent.””
“”The Panel does believe that the circumstances of this case are the type that support a decision for the Respondent based on laches.”
“”Laches is an equitable doctrine that may provide a defense when an adverse party has unreasonably delayed in asserting his rights to the detriment of the accused. The doctrine does not set any bright line in regards to the amount of time that must pass prior to the effectiveness of the doctrine’s implementation but instead bases the application of the doctrine on the particular circumstances in each case. Thus it is said that a party who “sleeps on his rights” may sometimes be barred by his own inactivity from asserting those rights. While laches is not expressly recognized in the UDRP Policy as a defense to a domain name complaint, some Panel decisions have recognized its availability when a particularly compelling set of facts have been present. The Panel believes that the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant. Prior decisions rejecting the applicability of the doctrine due to the failure of its express recognition in the UDRP Policies appear to be an unsound basis for ignoring the potential defense. While the Panel recognizes that the UDRP is administrative in nature, the practical effect of the proceeding is to provide equitable relief to the successful party. Thus, if equitable relief is the outer extent of the remedy available equitable defenses should also be considered in evaluating the whether any relief should be forthcoming. In the instant proceeding the Respondent emphasizes on numerous occasions that it has held the domain name and used it in connection with its website offerings for in excess of six years and rightfully posits the question of what should be made of the fact that the Complainant has done nothing during that time despite claiming that its development of the identical trademark and subsequent use predates that of the Respondent. This is not a case of passive holding by the Respondent or an instance of an unsophisticated Complainant. Complainant notes that it has been in business for more than a century and half and has developed worldwide fame in both real space and cyberspace through use of numerous trademarks. Where such a Complainant fails to police its claimed mark and does nothing for a substantial time while a Respondent develops an identical domain name for its own legitimate purposes, laches should bar that Complainant from turning a Respondent’s detrimental reliance to its own unjust benefit.“””
So Mr. Berryhill who represented NameAdminstration has finally gotten a UDRP panel to understand that laches, being an equitable defense is applicable to domain holders rights against trademark holders.
Great job, great decision.