Appearance Not Required for a Finding in Respondent’s Favor

Paragraph 4 of the Policy “sets forth the type of disputes for which [the respondent is] required to submit to a mandatory administrative proceeding.” “Mandatory” does not mean that the respondent itself must appear or lose control of the domain name. It is “obliged by virtue of the [registration] agreement to recognize the validity of a proceeding initiated by a third-party claimant” whether or not it responds to the complaint, Storey v. Cello Holdings, L.L.C., 347 F.3d 370, 381 (2nd Cir. 2003). A complainant does not prevail merely by having a trademark; a respondent does not lose merely because it fails to respond. Unlike a civil action, default does not constitute an admission of any material elements of the complaint. DNA (Housemarks) Limited v. Tucows.com Co, D2009-0367 (WIPO May 5, 2009).

While the respondent’s intention in registering the domain name and its conduct in using it are in issue whether or not it appears, there are certain circumstances that are clear cut in the respondent’s favor. Two recent decisions illustrate the point: 1) registering domain names composed of generic elements and using them for their association with the name, not the trademark, Dependable Staffing Services, LLC v. Ramesh Prasad, D2009-1206 (WIPO November 12, 2009) (<dependablestaffingagency.com> and <dependablestaffingagency.net>); and 2) registering domain names prior to the complainant acquiring its trademark, Nebraska Machinery Company d/b/a NMC Group v. Domain Names Inc., FA0910001288075 (Nat. Arb. Forum November 20, 2009) (<nmc.com>).

In both Dependable Staffing and Nebraska Machinery the Panels held that the Complainants had satisfied their low burden of proving a prima facie case that Respondents lacked rights or legitimate interests in the domain name. The record did not support any other conclusion. However, being two thirds right does not support a finding of bad faith registration or use. The parties in Dependable Staffing were located in different states (Arizona and California). The Complainant offered no “compelling evidence to the Panel regarding the scope of recognition pertaining to its service mark” or that a California public would associate the generic phrase DEPENDABLE STAFFING with it. After all, “most temporary staffing agencies are local in operation.” Since the Respondent is a resident of the state of California it is “thus likely outside of the Complainant’s orbit,” therefore “not reasonable … to conclude that the Respondent was actually or necessarily aware of the Complainant or its business operations when he registered the disputed domain name.” In any event, the Complainant even conceded that the Respondent may not have known about the trademark, which by itself is fatal to proof of bad faith.

Nebraska Machinery raises once again the issue of trademarks acquired after registration of the domain name sought to be captured by the Complainant. There is no requirement for a respondent to actively use a domain name. Non use of a domain name registered in good faith does not extinguish a right any more than long use of a domain name registered in bad faith creates one. A respondent cannot adversely possess a trademark. Conversely, there “is nothing in the Policy that suggests a registrant may be divested of a domain name simply because he failed to use it actively online,” National Football League v. Thomas Trainer, D2006-1440 (WIPO December 29, 2006) (<nflnetwork.com>). Nor is there any equivalent in domain name jurisprudence to the concept of abandonment under U.S. trademark law. Novatia LLC v. Matt Hite, D2007-0728 (WIPO July 11, 2007).

Complainant with Nothing to Complain About

The parties in Elizabeth Blair & Jennifer Miner & Kara Williams v. Shannon Lane, FA0909001285345 (Nat. Arb. Forum November 13, 2009) are a team of women who style themselves as the “traveling mamas.” They jointly and severally registered TRAVELING MAMAS as a service mark on the Supplemental Register for the purpose of “[p]roviding an on-line computer database in the field of travel information services; [p]roviding information, news and commentary in the field of travel; [p]roviding links to web sites of others featuring travel; [p]roviding reviews of travel service providers; Travel information.”

Registering a domain name in one’s own name incorporating the service mark – in this case <travelingmamas.com> – and excluding one’s “partners” in its ownership may be regarded as an act of disloyalty toward one’s friends but is not a basis for removing the domain name from the respondent. In this case, the Respondent has a divisible right in the service mark equal to her “partners.” In arguing for a “constructive trust” the Complainants produced no evidence of, for example, any agreement in writing that the registration of a domain name identical or confusingly similar to the service mark was the property of their joint venture. The Panel held that

Respondent participates in these scant rights, as a co-registrant of the USPO Registration, as indicated by Exhibit B to Complainant’s Complaint. However, as a joint owner of the mark, Respondent cannot infringe upon any co-owner’s rights in the service mark, merely by exercising her own right of use.

Registration on the Supplemental Register “carries little, if any legal weight under federal law” and reciting a first use in commerce earlier than the registration of the domain name “is not probative of actual use.” The Complainants in Traveling Mamas acting in their corporate capacity – they had formed a Colorado limited liability company – have the burden of proving that the mark was distinctive prior to the registration of the domain name. However, in this case they provided no evidence “of accumulated advertising or consumer surveys, such as would constitute evidence of the distinctive character of the mark required to prove the secondary meaning necessary to establish common law usage.” The Respondent’s evidence included the text of an e-mail in which she invited the others to participate: “I’m going to start a blog: Travel Writing Mamas…If you guys are interested, I can set you up where you can make posts.”

The case raises a threshold issue, Whether or not the Panel has jurisdiction over a dispute concerning ownership of a domain name incorporating a service mark jointly owned by the parties. It determined that it had because “the Complaint has alleged bad faith registration and use of a domain name, and the parties have provided sufficient evidence for the Panel to make a determination, in these regards.” The frequently applied alternative is for the Panel to take the position that the matter raises triable issues – here, the equitable claim of “constructive trust” – that are ordinarily outside the scope of the Policy. The Complainants’ grievance is more a question of alleged abusive conduct by a co-owner than abusive registration. Evidently, the “Traveling Mamas” had no agreement addressing registration of a domain name even though the description for the service mark – “[p]roviding an on-line computer database” etc. – obviously anticipated that they would have a web based presence.

Competitor Has No Right or Legitimate Interest in Domain Name Incorporating a Trademark Composed of Common Words

A respondent’s honest concurrent use of a term generally qualifies as a legitimate interest in a domain name identical or confusingly similar to a trademark, particular where the parties’ goods or services are in different classes, Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) [<autocar.com], or the term is composed of common words formed into a common phrase, Intersections Inc. v. Jasper Developments Pty Ltd., D2009-0795(WIPO July 20, 2009) [<creditcompare.com], but good faith is undermined when the parties are competitors and the respondent redirects the domain name to another landing page. Life Extension Foundation, Inc. v. PHD Prime Health Direct Limited, FA0910001289603 (Nat. Arb. Forum November 25, 2009).

Life Extension Foundation submitted its application to the USPTO for LIFE EXTENSION MAGAZINE in 1995. The mark was not published for opposition until 2003 and registered on the Principal Register later in the same year. The terms LIFE EXTENSION and LIFE EXTENSION FOUNDATION were registered subsequent to the domain name, but carried first use in commerce dates of 1980. The Respondent registered <lifeextensionfoundation.com> in 1999 several months after the Complainant registered <lifeextension.com>. Laches was argued and tacitly rejected. Proof of honest concurrent use requires evidence to support bona fide offering of goods and services before notice of the dispute [paragraph 4(c)(i) of the Policy].

The word “foundation” has several meanings, although two are uppermost in the context of the parties’ businesses. The obvious one is an institution supported by an endowment, which is the Complainant’s meaning. However, both parties produce an anti-aging unguent [Class 5], so “foundation” could also apply to the unguent itself, which appears to be the Respondent’s use of the word. The Respondent’s argument (aside from denying knowledge of the Complainant or its trademark) was that the Complainant “cannot own worldwide exclusive use of the term Life Extension as this is descriptive and in common daily use.” The first part of this argument confuses trademark and domain name law; the second part – “descriptive and in common daily use” – could be a good defense but it depends on the respective goods and services of the parties.

Choosing a string of syllables that also happens to be a trademark is not necessarily the result of an abusive registration and is not improbable, but a respondent who is also a competitor has a heavier burden than one offering different goods or services. Honest concurrent use of the term is less likely to have been accidental and more likely to have been opportunistic under these circumstances.

Although the parties in Life Extension are geographically distant from each other (British Channel Islands and Florida), both market their unguents in the United States. It is not sufficient to deny knowledge, equivocally. “We did not[e] that a `foreign` entity would subsequently appear and … then tell us they had pre existing common law rights since 1980,” which is a tacit acknowledgment that it knew of the “foreign entity.” Redirecting the Internet user to another landing page, <primehealthdirect.com> further supports the conclusion that the Respondent was aware that a third party was already using the phrase in a trademark sense. The Panel found both that the Complainant was exclusively associated with the LIFE EXTENSION mark and that the Respondent’s concurrent use was an abusive registration under paragraphs 4(b)(iii) (competitors) and 4(b)(iv) (taking commercial advantage of the trademark).

Prior Business Relationships

The UDRP provides a remedy for abusive registrations of domain names, including against parties formerly related, but jurisdiction does not extend to disputes or circumstances concerning past relationships. The Respondent in Feline Instincts, LLC v. Feline Future Cat Food Co., Inc., FA0906001270908 (Nat. Arb. Forum October 2, 2009) claimed that prior to partnering with the Complainant it had used the term “instincts” so that in registering <felineinstincts.info> it was returning to its base. At the same time it registered <catinstincts.com>. Its history in the feline food industry of using “instincts” gave it a right or legitimate interest in the domain name. It was entitled to connect its present with its past. And why not? Because, after the business relationship ended the Complainant registered FELINE INSTINCTS with the USPTO. It did not have a trademark registration and did not use the term “cat instincts” but contended that substituting a synonym was a violation of its trademark rights.

It may be that a party, consciously or not registers as a trademark a term invented by the counter party. In Armor Games Inc. v. — A / A, D2009-1027 (WIPO September24, 2009), for example, the Complainant registered ARMOR GAMES as a trademark after an industry announcement by the Respondent that he was changing his domain name to “armourgames.” When the Respondent found that the Complainant had registered <armorgames.com> – the American spelling – he registered <armourgames.com> – the Canadian spelling. “In all the circumstances it seems to the Panel that at the date of registration of the Disputed Domain Name the Respondent had a comparable right or legitimate interest in the Disputed Domain Name to the Complainant.” If there is an issue outstanding it does not belong in a UDRP proceeding.

The same can be said of the Respondent’s claim in Feline Instincts that it had a priority on the use of “instincts” in connection with feline food, except intervening history affected the parties’ rights. The domain names that included the trademark were registered in bad faith because the Respondent was aware that the Complainant had acquired rights it was entitled to invoke under the Policy. While the Respondent was free to challenge the Complainant’s registration of FELINE INSTINCTS in the USPTO that action was for another day, in another forum. Substituting “cat” for “feline” however was a threshold issue. The Panel found that the substitution was neither identical nor confusingly similar to the Complainant’s trademark, thereby doing what arbitrators are generally said to do, giving a Solomonic decision, finding bad faith for the “feline” domain names and dismissing the complaint for the “cat” domain names.

Date of Registration For Determining Bad Faith

In assessing bad faith “the complainant must prove that the respondent has ‘targeted’ the complainant or its mark in some way, or at the very least that the respondent had the complainant or its trademark in mind when it selected the disputed domain name,” Foodcube Technologies Inc. v. Registrant [1349920]: Domain Administrator, Foodcube Takeaways, D2009-0945 (WIPO September 4, 2009). The “usual telltale signs of cybersquatting” are the actions described in the four examples of bad faith. It must be evident that in some way the respondent anticipates a benefit by holding or is currently benefitting from actual use of the domain name.

The facts in Foodcube are unusual in that <foodcube.com> was registered prior to the Complainant’s trademark coming into existence but transferred several times while remaining in possession of the original registrant. The argument that rearranging ownership of a domain name within the family should be “effectively ignored” has been rejected. Certipost NV v. Virtual Point Inc, D2008-1183 (WIPO September 25, 2008). Each transfer constitutes a new registration, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (“[T]he transfer of a domain name to a third party amounts to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.”).

However, a complainant of a later acquired trademark right must still prove bad faith. A new registration is measured by the same standards as the original registration. It was evident from the record that there could have been no bad faith registration by the original registrant. In Foodcube, there was a new registration of the domain name and “the issue is whether the Complainant has proved that the Respondent acted in bad faith in effecting that registration.” There was no evidence of bad faith use by any of the prior registrants. Acquiring a domain name and continuing bad faith use is one of the telltale signs of bad faith registration. Except for asserting that the business advertised on the website was a sham, there was no evidence that the Respondent or its predecessors had the Complainant in mind at any time.

The Respondent’s explanations in Foodcube for the various transfers were not implausible as a response to statements made by the Complainant’s representative in cease and desist letters and correspondence with the Respondent. One of the notices stated that “WIPO decisions uniformly reject this view [that you, the Respondent have a superior claim because you registered the domain name earlier than the existence of the trademark right], and find that the date of registration does not confer a superior claim against a trademark holder when the domain name holder is not using the domain for any legitimate, bona fide purpose.” The Panel properly found (indeed, was generous in its language) that the statement was “potentially misleading.” In fact, the statement misstates the law and may very well have excited the Respondent into protecting his position by making “internal rearrangements.” “The Complainant’s real difficulty stems from the fact that this Domain Name was registered before the Complainant even came into existence and, unlike the position in Certipost, there is insufficient evidence of bad faith intent targeting the Complainant, in the ‘internal rearrangements’ made with the Domain Name” in the relevant periods (emphasis in the original).

Limits to Unauthorized Resellers, Distributors and Consultants

Two recent decisions have highlighted Respondents’ legitimate interests in domain names that incorporate a holder’s trademark, by happenstance the same Complainant, SAP AG v. SAP User List, D2009-1285 (WIPO November 8, 2009) (November 17, 2009, LegitimateUse) and SAP AG v. UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (May 29, 2009, Incorporating). That there are limits is discussed in Sony Kabushiki Kaisha (also trading as Sony Corporation), Sony Europe (Belgium) N.V. v. MCS Bulgaria 2003, D2009-1294 November 17, 2009) (<sony-bg.com> and <sonybg.com>).

The Respondent in Sony “acknowledges the similarity between the Complainants’ trade mark SONY and the Domain Names,” but argued that it was “not unlawful in Bulgaria to offer for sale the Complainants products by reference to the Complainants’ trade marks, and the Respondent therefore needs no authorization from it to do so.” The question is not the selling of Sony products and there is nothing unlawful in Respondent’s conduct. However, “the proposition that, because such conduct is not per se unlawful, the Respondent therefore necessarily has a right or legitimate interest in the Domain Names, in the sense meant by paragraph 4(a)(ii) of the Policy, is not correct.”

The proper question, rather, is whether in conducting this lawful business the Respondent is adhering to the guidelines that permit the use of a Complainant’s trademark, as was the result in the SAP decisions. A legitimate interest is earned by meeting the four part criteria, articulated in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). In Sony, the facts did not support this finding. It would be unobjectionable “[i]f the websites merely included links to other, clearly separate, websites offering other goods, in addition to a certification as a Toshiba dealer (which could serve as nothing more than an assertion of genuineness of the Respondent’s business).” However,

in this case a consideration of the website under the Domain Name <sony-bg.com> today shows that the same website is clearly offering other goods, including those of the competing supplier Toshiba, or, more accurately, that pages from another website of the Respondent are being linked so that they appear on the website under <sony-bg.com>.

As a result, Respondent in Sony fails the second and third prongs of the Oki Data test, namely that (2) it does not use the site to sell only the trademarked goods and (3) the site does not accurately disclose the registrant’s relationship with the trademark owner.

Test of Knowledge; Awareness of Complainant’s Trademark

Paragraph 2 of the UDRP reads that by “applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” (Emphasis added). The “knowledge” that the respondent must have is actual. The U.S. trademark doctrine of constructive notice is not recognized under the Policy. The “mere existence of Complainant’s trademark rights at the time Respondent registered the disputed domain name does not … create any presumption of knowledge,” Salmi Oy v. PACWEBS, D2009-0040 (WIPO February 4, 2009). However, this simply means that the complainant must offer evidence from which the inference of knowledge can be drawn. The requirement is less than certitude but more than statutory constructive notice. A leaning toward knowledge, however, is more likely to be found when the trademark in issue is particularly strong, heavily advertised or promoted, where the parties are in the same territorial or niche market, have had prior business dealings or are in close geographic proximity. The test of knowledge is “awareness.”

In Ford’s Produce Co., Inc v. Eric Botner, FA0910001288827 (Nat. Arb. Forum November 20, 2009) the Respondent admitted that “it was aware of the Complainant’s website and its offering of products prior to registering the name” although sought to excuse itself on the theory that its CEO “saw no conflict.” Beholders’ eyes, however, see what they want. While having knowledge is not necessarily inconsistent with good faith, it is not the test for determining it. Even if the Respondent knew nothing of the Complainant’s trademark for EARTH FAMILY, it admitted knowing the Complainant’s domain name, <earthfamilyfood.com>. In order capture some of the Internet traffic otherwise going to <earthfamilyfood.com> it varied the domain name by adding an “s” to “food” – forming <earthfamilyfoods.com>. This may raise an interesting question as to whether a respondent’s knowledge based on a domain name rather than the complainant’s trademark satisfies the bad faith requirement under the Policy. But, it appears that knowledge of one presumes the other.

A complainant’s argument, however, cannot simply be based on the theory of constructive notice. ENX (European Network Exchange) Association v. Ahven Tolunay, D2009-1218 (WIPO October 28, 2009). “The Panel … does not accept the Complainant’s submission that a doctrine of constructive notice applies in circumstances where there is a United States trade mark registration so as to render the Respondent necessarily aware of the Complainant’s mark.” There has to be evidence of notice of the kind that denial of knowledge is implausible. Panels have emphasized from the earliest decisions that doctrines of national law are not to be imported into the UDRP. The conclusion drawn from the evidence in ENX is a model of deduction. The Panel leads up to his conclusion by noting that the Respondent could possibly have become “generally aware of the Complainant’s trade mark as a consequence of its general repute,” or its location relative to the Complainant. The Respondent also “appears to have a variety of domain name registrations … quite possibly for re-sale purposes,” but this too is “not prima facie indicative of bad faith.” These bits of evidence, however, add up:

The coincidence of factors including the proximity of the Respondent’s stated address to the Complainant’s offices, the apparent provision of false owner name information and false address information both for the Disputed Domain Name and it seems for other domain names owned by the Respondent, are all indicative that the Respondent acquired the Disputed Domain Name in bad faith.

Moreover, the “inference of the Respondent’s registration in bad faith is only reinforced by the lack of bona fides of the website to which the Disputed Domain Name resolves, the lack of evidence of any goods or services provided by the Respondent and the substantial likelihood that the content of this website was created by the original owner of the Disputed Domain Name and has simply been replicated by the Respondent.”

Can There Be Typo-Piracy Before Issuance of a Trademark?

Registering 1,017 variants of the Complainant’s trademark FREECREDITREPORT.COM is eye-popping and in its way hugely comic. ConsumerInfo.com, Inc. v. Netcorp Netcorp c/o Netcorp, FA0909001283469 (Nat. Arb. Forum November 11, 2009). Here is a dozen sampling from the beginning of the alphabet: <arfreecreditreport.com>, <asfreecreditreport.com>, <bfreecreditreport.com>, <breecreditreport.com>, <cafreecreditreport.com>, <cfreecreditreport.com>, <cofreecreditreport.com>, <connecticutfreecreditreport.com>, <ctfreecreditreport.com>, <dcfreecreditreport.com>, <defreecreditreport.com>, <dfreecreditreport.com>.

How does a registrant explain these variations? Well, first of all when the trademark application was made for FREECREDITREPORT.COM the Examining Attorney rejected it “due to its descriptiveness.” Although the Complainant overcame the objections (according to the Respondent) it “had no rights in the mark at the time the domains were registered.” Timing in this case coupled with proof of a common law right is particularly important. The Complainant’s application was filed in February 2006 and the trademark issued in May 2008. However, the Complainant claimed a first use in commerce as January 1999. The evidence for a January 1999 first use was compelling. The Complainant asserted (without dispute from the Respondent) that

between 1999 and 2002 it spent more than $12 million per year promoting the services offered under the mark, and that advertising spending increased each year…. [In] September 2002 [the advertising] ran on 18 cable networks, generated 130,000 consumer responses, and resulted in 110,000 sales. In January 2003, another advertisement ran during the Super Bowl pregame telecast, exposing the mark to millions more consumers. Complainant contends that a survey in June 2005 indicated that 53% of consumers were at least somewhat familiar with the FREECREDITREPORT.COM mark.

The disputed domain names were registered during a period of intense nationwide exposure to the trademark. However, the question is whether the Respondent’s registrations were fortuitous in the sense of two people lighting on the same combination of common words, with the Respondent being the first to register? This was improbable because of the variations. If the Respondent had been the first to register in good faith there would have been no reason for variations. The Panel found 15 different kinds of variations, many being typographical, others changing the tense, still others “adding generic or descriptive words that ha[d] obvious association with the Complainant’s business” and still others “misspelling the mark by changing a letter in the mark to a different letter,” and more.

Typosquatting is defined as the “intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.” Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO January 21, 2003). In general, a respondent’s registration of a domain name that misspells a trademark, or is composed of added, substituted or transposed letters that varies the prototype, is not merely confusingly similar but implies knowledge and suggests targeting the trademark. While a pay-per-click website can be “use in connection with a bona fide offering of goods or services” [paragraph 4(c)(i) of the Policy], it fails when it is used for “displaying links to third-party websites, some of which provide credit report viewing services in direct competition with Complainant.” Piggybacking on a complainant’s business model developed and advertised prior to trademark registration but after the complainant has established itself in the marketplace does not support registration in good faith; rather, it is abusive conduct.

Complainant, Successor Trademark Holder

Successor trademark holders complaining about domain names registered before they acquired their interests have the added burden of not having all the documentary facts and sometimes no explanation for long delays in taking action against a registrant . This was illustrated recently in Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) for <autocar.com> and <autocar.org> in which the complainant acquired the 1905 trademark in 2001 and waited 8 years to complain about domain names registered in 1998 and 1999.

A more successful outcome is reported in Layby Services Australia Pty Ltd. v. Chrisco Hampers Australia Ltd., D2009-1066 (WIPO November 3, 2009) in which the complainant, a new owner of a gift business commenced a timely proceeding against a respondent who registered <hamperking.com> prior to the Complainant’s assignor acquiring a trademark registration for HAMPER KING. It had to overcome the difficulty of explaining why it was entitled to a domain name registered before a trademark was officially issued. Ordinarily, the lacuna of evidence supports the respondent unless there is proof that the trademark was in use and distinctive prior to issuance that the respondent had knowledge of the complainant and its trademark. Generally,

in these circumstances the WIPO panelists’ consensus view is that when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

The complainant’s task is harder when dealing with a generic word or phrase, of which there have been a number of recent examples. MediaWhiz Holdings, Inc. v. Domain Admin, PrivacyProtect.org / Domain Manager, MediaWiz Services Pvt Ltd., D2009-1227 (WIPO October 28, 2009) (<mediawiz.biz>)

Layby Services, however, offered sufficient evidence to prove that the Respondent competed in the same market and more importantly in an exchange of correspondence prior to the commencement of the proceedings had disclosed that it was using the domain name in bad faith; that, in fact, it “provides prima facie evidence that the Respondent was using the disputed domain name to divert Internet users to its website.” The “act of redirecting Internet users to other websites by using the reputation and goodwill of the Complainant’s trademark through a domain name that incorporates a trademark to a website unconnected to the trademark owner, does not constitute bona fide offering of goods and services.” However, proof of bad faith use does not necessarily support bad faith registration.

In Layby Services the Complainant supplemented its evidence persuasively in response to a Procedural Order, which is a gift to parties who take advantage and a vexation for those unable to respond affirmatively. See, for example, CSS Polymers Inc. v. Robert Beirne, D2009-1179 (WIPO November 9, 2009), in which in response to the Respondent’s excuse that “[d]ue to the lack of better record-keeping and the Panel’s request that Complainant CSS Polymers respond within only four (4) days, I am unable to locate documents showing use of the `CSS Polymers’ trademark in 2002” the Panel stated that the Order “was intended to benefit Complainant, not burden it.” Further, it “was incumbent upon Complainant to assemble the evidence it needed to carry its burden on the elements of the Policy and to support assertions in [the] declaration before commencing this proceeding.”

The Problem of Waiting Too Long

A long line of decisions holds that laches is not applicable to a UDRP proceeding, but waiting too long to assert a claim weakens the complainant’s case. The majority in Board of Trustees of the University of Arkansas v. FanMail.com, LLC., D2009-1139 (WIPO November 2, 2009) noted that “the considerable delay in bringing this case does color the merits of the dispute.” Although stopping short of finding that laches applied, it nevertheless uttered a heretofore heretical thought, namely that it was “prepared to acknowledge the possible applicability, in appropriate and limited circumstances, of laches in a case under the Policy.”

The possibility is based on a reading of paragraph 15(a) of the Rules which states that “a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” This view “is not unreasonable … given that, in many if not most jurisdictions in the United States and in countries such as the United Kingdom and Australia, the formerly sharp line between law and equity has been blurred if not effaced by the amalgamation of law and equity. Indeed, it would appear unlikely that when they used the expression “principles of law that it deems applicable,” those who drafted the Rules meant “principles of law but not equity.”

Lapse of time works against the complainant if in the interim the respondent has either gained a right or interest in the disputed domain name or so much time has elapsed without explanation that the complainant’s allegation of abusive registration is undermined. “[T]he longer the time between the registration of a disputed domain name and the assertion of the Complainant’s rights the harder, in general, the inference of bad faith registration becomes to sustain,” YIT Corporation v. Future Media Architects Inc., D2007-0588 (WIPO July 27, 2007). Past decisions generally focus on respondent’s defense under paragraph 4(c)(i) of the Policy that it has acquired a legitimate interest in the domain name by through bona fide use “before notice of the dispute.”

In Board of Trustees of the University of Arkansas Respondent registered <razorbacks.com> in 1995. One panelist who joined the majority to express the heretical view about laches, stepped back from applying it in this case, although his colleague would have done so. The third member of the Panel then joined the first in rejecting a laches defense because the “Respondent did not present any hard evidence of prejudice it suffered as a result of Complainant’s considerable delay.” The (new) majority held that

although there may be no evidence of actual financial prejudice suffered by Respondent and although the whole matrix may not be properly characterized as laches, in Panelist Brown’s view, the delay and lack of explanation for it strengthen Respondent’s case for a right or legitimate interest in the Domain Name and negate Complainant’s case that the Domain Name has been used in bad faith. That is so because the unchallenged evidence is that Complainant by inactivity encouraged Respondent to continue to use the Domain Name in the way in which Complainant knew it was being used.

The shifting majority notwithstanding all three members of the Panel agreed that the Complainant failed to sustain its burden of proof that the Respondent lacked a legitimate interest in the domain name which it was using in its vanity mail service. Also, “razerbacks” is not exclusively associated with the Complainant; for some, it “is just a hog”.