Certplex, Ltd. (“Complainant”), who owns the domain name Braindumps.com just lost its attempt to grab the domain name Braindumps.biz after waiting 13 years to bring the UDRP.

The one member panel of R. Glen Ayers while explicated not deciding the case on the doctrine of Laches spent a lot of time discussing the 13 period from which the .Biz domain name was registered to the date the Complainant filed a trademark (2014) and then filed this UDRP.

Here are the highlights:

Complainant uses the BRAINDUMPS mark to sell IT certification test prep materials. Complainant owns the BRAINDUMPS mark through its registration with the United States Patent and Trademark Office (“USPTO”). Complainant applied for registration of the trademark on July 24, 2013; registration of the mark was granted on July 8, 2014.

Complainant also alleges that it enjoys common law rights in the mark from as early as December 11, 1997 when it registered the domain name.

Complainant may have been the first to use the term or expression “braindumps,” and registered the domain name first, in December 1997. It asserts first use of the term on April 23, 1998. Respondent registered its domain name, Respondent registered the domain name Braindumps.biz on November 17, 2001, braindumps.biz, and began to use the domain commercially in December of 2001.

For thirteen years, the two users co-existed.

Then, in 2013, Complainant filed to register the mark BRAINDUMPS and received its registration in 2014.

Then, almost immediately, it filed this action seeking to shut down a competitor.

The Respondent has used the name to compete with Complainant during the period, selling competing products to those sold by Complainant.

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).

Respondent has also shown that the term might well have been considered generic during the twelve or thirteen years between registration of the Complainant’s domain name and the registration of the mark.

Certainly, during that period, Respondent developed rights in the name.

Further, the twelve year history of Respondent’s use does not reflect any element of bad faith. Respondent has asserted, that as a resident of Qatar, it had no knowledge of the existence of a common law mark during that period. Even if there is some presumption that prudent parties investigate competing web sites and names, Respondent has offered some evidence that, at least initially, it could well have viewed the competing domain name as just a registration of a common term like, for example, “computers.com.”

The Panel concludes that Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), and the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

Respondent has not registered or used the domain name in bad faith and has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

Here, while there is some evidence of diversion for commercial gain, the diversion cannot have been terribly significant if Complainant waited all of these years to act.

Respondent notes that it registered the domain name on November 17, 2001 and has been using the name for commercial purposes since January 30, 2002 to much success. Respondent urges that Complainant admitted that Respondent registered the disputed domain name on November 17, 2001, and points out that the date is at least thirteen days before Complainant began using its website to sell IT certification test materials.

Doctrine of Laches

Both parties have discussed the doctrine of latches, a legal defense based upon delay in the exercise of some right.

Respondent

Respondent argues that Complainant waited for years to file this UDRP case despite the fact this domain name is identical to its alleged trademark. The doctrine of laches supports a finding for Respondent.

Complainant

Complainant claims it cannot be found to have rested on its rights too long. Complainant has long used its mark in commerce, but thought it prudent to wait to enforce a UDRP action only after its BRAINDUMPS mark was registered.

This registration occurred only in 2014.

Because 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.