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.
Congrats to Frank.
Awesome!
Keep winning those UDRP’s Frank, John and Name Administration!
You are representing us all.
Long live generic domain names!
I say congrats to John!
And I agree Andrew, if this is picked up by other panels (and it should be!), it would be a great thing for domainers!
More important than the issue of latches was this part:
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.
Great job John! This will help future cases and the entire industry
This is an interesting development but I wonder if it will be an outlier. Depending on the complainant, it may not be financially feasible to go after all offending domains in a “timely” fashion. Do you lose your rights to laches after five years? six years (as seems to be the case here)? Longer? What’s a reasonable time to expect policing of the mark? Can you keep the clock alive by sending demand notices? Interesting questions.
Good going and nice job, Frank & John.
Bret–I’m not an attorney, but have done a fair amount of pro se IP work over these past some years.
As to your good question regarding whether or not the TM clock could be keep alive via the use of demand notices, I would posit that if an entity didn’t follow up such (a) demand notice(s) within a “reasonable” amount of years (perhaps 3-5), that such a “noticed time delay” would in fact make the case for laches even stronger; since the domain claimant has now explicitly acknowledged both the domain’s existence and it’s belief it has a legal claim to said domain.
In fact, I received such a “give us that domain” notice regarding one of my .coms over 4 years ago from a company which has done nothing since.
You can be sure I’ll be arguing laches if the need arises; including referring to Frank’s case here.
As well as filing for cancellation of their generic word trademark with the USPTO.
Note: This is not legal advice.
….and, another bites the dust.
Congrats to Frank and John!
good news for domainers indeed.
Sadly, Until there is some kind of ….
“Rules of Procedure” …
it will be the same as before with
incompetent unschooled panelists
and the usual expected cutNpaste
“Bozo Judgements” at whim! …
Wait unless …
Maybe, JOHN could Clone himself 🙂
I blogged about this case, I’m not sure that it’s quite as exciting as people are making out. Remember that UDRP decisions don’t have (much) precedential value, also.
http://udrp-attorney.com/2010/11/23/dont-wait-too-long-the-doctrine-of-laches-the-udrp/
Still, it’s an interesting couple of paragraphs, I suppose. Do domainers find NAF to be a friendlier forum than WIPO? I thought it was the opposite.
ON A SERIOUS NOTE:
Rules of Procedure NEEDED!
I do think this is truly a LANDMARK decision
in that, UDRP decision will not go on and on
ignoring repeated “precedent” obvious cases.
The way is stands now it is becoming obvious
that UDRP is a self serving entity, masquerading as a purveyor of justice with in fact it is the opposite.
This along with FUTURE evidence of “Judicial Incompetence shall weigh in heavily for a
total overhaul, WHEN there authority is
eventually challenged.