In the case of Laminex, Inc. v. Yan Smith, Claim Number: FA1211001470990, a 3 person panel has found against the Complainant on the basis of laches. This means that the Complainant should have filed a long time ago, but failed to do so on a timely basis.
Hon. Neil A. Brown, one of the three panelists. Photo from MySpace.com.
A panel consisting of Hon. Neil Anthony Brown QC, Hon. Bruce Meyerson (Ret.) and John Upchurch determined that the time was ripe to use the Doctrine of Laches to Deny a claim. No previous panel has ever done so. Historically, the Panel found, “Respondent has raised the issue of laches as a defense to the Complaint. Because the Panel agrees, the Panel finds it unnecessary to consider the three elements of the Policy.”
Here is the Decision in full:
The relationship of laches to UDRP proceedings was discussed at length in craigslist, Inc. v. Craig Solomon Online Servs., FA 1367598 (Nat. Arb. Forum Mar. 1, 2011). In that case the complaining party offered no explanation for a nine-year delay in initiating the complaint. The panel wrote:
“Laches is an equitable defense that has been held to apply in actions to enforce trademark rights. Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 601 (8th Cir.1999). Laches applies when a claimant inexcusably delays in asserting its claim and thereby unduly prejudices the party against whom the claim ultimately is asserted. Ray Communications, Inc. v. Clear Channel Communications, Inc., 673 F.3d 294, 300 (4th Cir. 2012). To successfully defend on the basis of laches a defendant must demonstrate the presence of three elements: (1) a delay in asserting a right or a claim; (2) that the delay was not excusable; and (3) that there was undue prejudice to the party against whom the claim is asserted.” Kason Indus., Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir.1997).
The Panel concurs with the decision in The New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Nat. Arb. Forum Nov. 17, 2010) where the panel ruled that that laches is “a valid defense in any domain dispute where the facts so warrant.” Although laches has not always been viewed as a defense in a UDRP proceeding, it is now recognized that laches may be found in the appropriate case:
“Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.10 (2d ed.) The recognition of laches as a defense in UDRP proceedings was discussed fully in Professional Rodeo Cowboys Ass’n, Inc. v. Alternative Advertising Concepts, Inc. / Kenneth Forman, FA 1440736 (Nat. Arb. Forum June 26, 2012). The panel found that because the complainant waited six years to file a complaint after the domain name in dispute was registered, the complaining party failed to establish that the respondent lacked rights or legitimate interests in the domain name. The panel explained why laches may be considered as follows:
While the doctrine is not expressly recognized as a defense in UDRP proceedings the principle has long been applied in many cases even when the language has not. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant’s delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
The arguments against the application of laches in UDRP proceedings has (sic) frequently been based on formality more than reality as it is oft repeated that equitable relief is not part of an administrative proceeding. However the reality is that the UDRP only offers what amounts to equitable relief and there has been a growing recognition and willingness to expressly consider laches as an equitable defense in a proceeding where equitable relief is the only possible remedy. Furthermore laches is a well-recognized defense in trademark law in the United States where both parties reside. In N.Y. Times Co. v. Name Admin. Inc. (BVI), (Nat. Arb. Forum Nov. 17, 2010), the panel expressly recognized laches as a valid defense where the Complainant was a sophisticated entity that had been in business for a substantial period of time and had registered several trademarks and domain names, and the Complainant stood by without explanation and watched the Respondent actively build a business using the disputed domains that allegedly included its protected marks for more than six years.
E.g., Tony Novak v. Marchex Sales, Inc / Brendhan Hight, FA 1418478 (Nat. Arb. Forum Mar. 1, 2012) (while not finding laches nine year delay in bringing complaint held not to establish bad faith).”
Here, the record reflects the following. Respondent registered the domain name in 1998 and has consistently done business selling novelty IDs since then, and under the name THE ID SHOP since 2003. Respondent has invested substantial sums promoting its business and advertising that business on the Internet through the <theidshop.com> domain name.
The Complainant holds a trademark with the USPTO for the ID SHOP mark and has used that mark since 1989. The focus of Complainant’s business is in the security industry where it works with hospitals, schools, manufacturing operations and other organizations which require valid photo identification cards.
Despite having the opportunity to do so, Complainant has offered no explanation for the 14-year delay in bringing this Complaint. In light of the unexplained delay in bringing this proceeding, and the demonstrable harm to Respondent should the domain name be transferred, the Panel concludes that under the doctrine of laches, relief should be denied.
DECISION
Because the Complaint is barred by the doctrine of laches, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <theidshop.com> domain name REMAIN WITH Respondent.
Thanks for “listening”
Howard
The Neu Facebook
