Frank Schilling beats media behemoth; panel decision could be important.
Frank Schilling’s Name Administration has won a case against the New York Times Company over the domain name DealBook.com. But it’s more than a victory; the National Arbitration Forum panel also addressed an issue that most other panels have dismissed: doctrine of laches.
As described by the panel, “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.”
Imagine if I had a trademark for “The Domains” dating to prior to Michael Berkens starting his popular “The Domains” blog. When he started blogging I was silent on the issue, letting him build up his blog until 2010, when I then filed a claim against him.
It might be fair back when he first started the blog for me to raise the issue, but now that he has invested much time into the blog without my opposition it wouldn’t be right. And it might show that I didn’t believe I really had these rights.
Most UDRP panels ignore the doctrine of laches, but not this one:
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 this particular case the panel notes:
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.
The recognition of the time it took for a company to file this complaint, if picked up by other panels, could be a major win for respondents in domain name disputes.
John Berryhill defended Name Administration in the case.