Telepathy, Inc. represented by ESQwire.com Law Firm just beat back a UDRP on the domain name libertad.com.

The three member panel found that the term is generic, the Spanish word for liberty.

There is an interesting discussion on the topic of latches as the complainant waited some 12 years to bring this complaint and also a dissenting opinion by the Honorable Neil Brown who thought like I do, that the complainant certainly waited too long to bring the complaint.

Here are the relevant facts and discussion.

The Complainant was Libertad Servicios Financieros, of  Mexico

“The Complainant owns various trade mark registrations for LIBERTAD (and variations thereof) in Mexico, the earliest of which, according to the certificates provided by the Complainant, was registered in December 1990. ”

“The Complainant also operates websites at two domain names, held by Abastecedora de Conectividad, S.A. de C.V., incorporating LIBERTAD, namelyand, the registrations for which date from July 13, 1998 and June 26, 2009 respectively.”

The Disputed Domain Name was registered by the Respondent on February 23, 1999. As at the date of this decision, and goes to a parked page

“”Prior to addressing its findings in accordance with paragraph 4(a) of the Policy, the Panel will address the Respondent’s contention that the Complaint should be barred on the basis of the Complainant’s delay in filing the Complaint after the registration of the Disputed Domain Name. ”

“It is commonly accepted that the doctrine of laches does not apply under the Policy, and that a delay in bringing an action does not prevent a complainant from recovering a domain name (See paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Therefore, the Panel finds that the Complainant is not prevented from recovering the Disputed Domain Name by virtue of it bringing these proceedings 12 years after the registration of the Disputed Domain Name.”

“The Panel notes that the WIPO UDRP decision cited by the Respondent in its Supplemental Submissions, in support of its argument for applying the doctrine of laches, namely Converse Trading, Ltd. v. Vertical Axis Inc., WIPO Case No. D2011-1616, expressly recognises the view held by many panelists that “the doctrine of laches, as such does, not generally apply under the UDRP; and that delay in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements.”

“Further, the Panel notes that the panel in this previous UDRP decision does not state a preference for the (minority) view that the doctrine of laches / delay should be applied, but merely that arguments for both views were heeded in its decision. ”

 

“”The Complainant contends that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorised to use its LIBERTAD mark. Further, the Complainant submits that the Respondent does not own any registrations for trade marks incorporating the “Libertad” name and has never been commonly known by the “Libertad” name (or variations thereof). Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of production of evidence that it does possess such rights or legitimate interests.”

“The Respondent contends that “Libertad” is a common Spanish dictionary word (meaning “freedom” or “liberty”) to which it has rights and legitimate interests to use in relation to the display of general and descriptive advertising links (related to general topics of interest, including jobs, hotels, music and goods) on the Website.”

“In respect of the Disputed Domain Name, the Panel accepts that in light of the facts that: (a) there is no evidence, whether submitted by the Respondent or otherwise, that the Respondent has been commonly known by the Disputed Domain Name; and (b) that the hosting of sponsored links on the Website for revenue precludes any argument that the Disputed Domain Name is used on a noncommercial basis, the only circumstance that the Respondent could potentially demonstrate under paragraph 4(c) of the Policy is that it is using the Disputed Domain Name in connection with a bona fide offering of goods or services. ”

“The Panel notes that the Respondent’s use of the Website to host various sponsored links can constitute a bona fide offering of services capable of giving rise to rights or legitimate interests for the purposes of the Policy, particularly where the Disputed Domain Name is used in a descriptive (and not trade mark) sense, to describe the sponsored links hosted”

“Given the wide meaning of the word “libertad” (“freedom”) and the consequent versatility of its application, the Panel finds it difficult to accept any argument that the Disputed Domain Name is not descriptive of the various sponsored links hosted on the Website, particularly in the context of employment, which is the subject matter to which numerous links on the Website relate.”

“The Panel also notes the absence of any evidence of use of the Disputed Domain Name or the Website in a trade mark sense, given that the Website content appears, at least as at the date of this decision, to be automatically generated (with different sponsored links appearing with each refreshed view of the Website) rather than predetermined by the Respondent.”

“The Panel accordingly finds that the Complainant has not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.”

However when it came to the discussion on whether the complainant engaged in reverse domain hijacking the majority of the panel let the complainant off the hook:

“Given the Complainant’s apparent misconceptions that the hosting of sponsored links can under no circumstances constitute legitimate use under the Policy and that its trade mark registrations for LIBERTAD confer exclusive rights over the Spanish dictionary word “libertad”.”

“Although the Panel does not consider it necessary to discuss its findings under the third element required under paragraph 4(a) of the Policy, it acknowledges that the Complainant’s contentions in relation to bad faith, namely that the Website contains an offer for sale of the Disputed Domain Name and, as at July 12, 2011 (the date of the Certified Statement of Facts annexed to the Complaint) the Website contained a reference to the Complainant, which was listed as one of the “Related Links”, are factors capable of indicating bad faith in combination with other relevant circumstances (which the Panel notes are absent on the facts of the instant case), such that the Respondent’s contention that the Complainant has brought forth a case with no basis, cannot be sustained. ”

In his dissenting opinion the Honorable Neil Brown diagreed with the majority on the issue of latches.

“”I agree with the result of these proceedings, but I respectfully disagree with the majority view on the issue of laches or delay.”

“In all of the circumstances, I would find that there should be a finding against the Complainant in part because of the delay in bringing the proceedings and, in one sense more importantly, that the delay is unexplained, despite the Respondent having expressly put the issue into contention.”

“The respective positions of the parties on this issue can be summarised as follows. In its Response, the Respondent submitted that the Complaint was in effect barred because of laches and that it would rely on that issue as a defense and that, as an alternative, the inordinate delay of over 12 years showed that the Complainant had never believed that the registration of the Disputed Domain Name had come about as an act of bad faith by the Respondent.”

“There is no doubt that this submission put the Complainant on notice that delay was an issue and could put the outcome of the case at risk if the Complainant did not come forward with some explanation. ”

“Indeed, the delay was such that there was probably already an obligation on the Complainant to explain it, for there may have been a good reason why it had occurred. But when the Respondent expressly raised the issue, the obligation on the Complainant to give some sort of an explanation was put beyond doubt.”

“The Complainant, in its Supplemental Submission, gave no explanation for the delay. Instead, it simply relied on the standard arguments that the defence known as laches was not available in UDRP proceedings and cited some of the decisions to that effect.”

“Its sole argument was in substance that there was no time limit or statute of limitations that applied to these proceedings. It did not refer to or seek to distinguish in any way the more recent and unanimous three person panel decision in The New York Times Company v. Name Administration Inc. (BVI), NAF Case No. 1349045 which held in effect that laches is “a valid defense in any domain dispute where the facts so warrant.”

“But the most notable absence from the Supplemental Submission was any explanation for the delay; nothing was provided to assist the Panel on such obviously significant matters as whether the Complainant knew of the Disputed Domain Name and Website, when it became aware of them, its reaction to that news, whether it made any protest or demand for the Respondent to cease and desist and, if not, why not.”

“These are not peripheral or difficult questions; they concern matters of facts that are solely within the knowledge of the Complainant and are matters that reasonable diligence should have convinced the Complainant that it had to volunteer whatever facts it could contribute on those matters.”

“The omission of any such evidence is significant, as is the omission of any reason why the Complainant is not contributing to the evidence in this manner. ”

Moreover, its omission is made, at least to this Panelist, the more egregious as the Complainant was at pains to submit and prove that it is “a top notch financial “company”, that it had conducted its business since 1960, carried out a wide marketing campaign over the Internet from Yahoo! to Facebook, was heavily engaged in the media and “recognis(ed) the importance of the Internet as a means of communication between the Complainant and the public…”.

“The Complainant is clearly a well-established enterprise in a competitive field and a sophisticated user of the Internet and all manner of modern communications.”

“All of that being so, the inference must be drawn that one of the matters of great interest to the Complainant was, or should have been, any possible abuse of its name and trade mark that might have been perpetrated on the Internet.”

“Consequently, it is hard to accept that the Complainant was not aware of the Disputed Domain Name, especially when it had an opportunity to show that it was not aware of it, if that were the case, but declined to do so.”

“Accordingly, the Panel has been left in the situation where there is an unexplained delay in bringing these proceedings of over 12 years since the Disputed Domain Name was registered, which is an extraordinarily long period of time for anything relating to the Internet.”

“It should be stated clearly that it would not be appropriate to rule that a claim under the UDRP is automatically barred because of laches or delay. But it is equally inappropriate to say that such a defense cannot even be considered or that relevant facts cannot be taken into account or weighed in the balance in the course of making a proper decision.”

“There is an obligation on panels under the UDRP to consider all of the facts and circumstance of a given case and to make a decision in the light of those matters and, in the opinion of this Panelist, that must include the Complainant’s knowledge of the Disputed Domain Name, its conduct in the light of that knowledge and the reasons for any delay in instituting the proceedings.”

“Accordingly, although the issue of delay will not determine by itself the outcome in this case and although it will probably be only in rare cases that delay will have that effect, the issue must always be held in reserve for consideration where the facts require it and especially so in cases where the delay is considerable and unexplained.”

Mr. Brown then went on to chat about the majority decision that there was no Reverse Domain Name Hijacking.

“I respectfully disagree with the way the decision on Reverse Domain Name Hijacking has been expressed and with some observations made on the issue of bad faith. In general, the totality of the evidence does not indicate any bad faith intention either with respect to the registration or the use of the Disputed Domain Name.”

“One is reluctant to make a finding of Reverse Domain Name Hijacking except in the clearest of cases and this Panelist has declined to follow many submissions that such a finding should be made. ”

“That is because complaints that are over-optimistic are not necessarily irresponsible or deserving of censure. ”

“In the present case, the matter is difficult to decide. On the one hand, the case was always very dubious because the Disputed Domain Name consists of the essentially common word “libertad” in the Spanish language, the equivalent of “liberty” in the English language, a word that invokes the very notion of liberty that the Internet has promoted. ”

“As such, it was always an uphill battle to show that a domain name adopting such a generic notion could ever be found to be abusive.”

“Moreover, this Panelist has been very concerned by the apparent lack of candour on the part of the Complainant in explaining what, if anything, it knew of the Respondent’s Website and the Disputed Domain Name when all the circumstances tend to suggest that it was or should have been aware of them. ”

“Furthermore, the Complainant’s case was misconceived.”

“It summarized its case by submitting the following: “the Complainant has a trademark registration of the word LIBERTAD and the Respondent does not have a trademark registration”.

“On the other hand, the Complainant was probably entitled to be concerned at the potential confusion that might be engendered in the minds of Internet users from the use of the Disputed Domain Name and if that were the case it might well be reasonable for it to decide to challenge it by filing the Complaint.”

“On balance, the case is probably best categorized as one on the over-optimistic side rather than one deserving of censure. However, complainants should always carefully weigh these considerations when deciding whether to file a complaint, as the power to make a finding of Reverse Domain Name Hijacking is always available for panels to use in appropriate cases.”

So there is a clear split in UDRP panelists on the issue of latches.

There are some panelist like Mr. Brown who consider the delay in the proceedings as potentially fatal to a complaint while other panelist will not consider any amount of time as too much time to wait to file a complaint.

When the federal courts are split on an issue of law, the case if rip for the Supreme Court to decide what the law throughout the land should be.

However in the UDRP world these decision are allowed to continue to go on and on with some panelist thinking the sky is blue others thinking its orange.

Not comforting for either domain holders or complainants.

Its also quite interesting to note that panelists have no problem placing the burden of knowledge on the domain holder, to know if a term is trademarked in a country somewhere in the world for  a TM that no one has ever heard of, but allows complainants the right to misinterpret the law, even clear law as to what constitutes bad faith and the UDRP policy.