A UDRP decided this past week between the New York Times and Frank Schilling’s Name administration regarding the domain name DealBook.com may have been one of the most important decisions for domain holders, as the panel finally fund that the legal doctrine of latches can apply to domain disputes.
The doctrine of laches basically means that someone has to file a timely complaint if they want to object to another parties action
The question is simply.
How can a trademark holder allow a domain owner to register and use a domain for years and year, without complaining, just to wake up one day, find that their “trademark” is suddenly valuable and then go after the trademark holder for infringement
Here are the relevant facts as laid our by the panel:
The Complainant the New York Times, “secured U.S. federal trademark registrations for DEALBOOK on the Principal Register in 2008 and 2010 and asserts the exclusive right to use the mark in connection with the goods and services identified in its registrations.”
“Those registrations indicate multiple dates of first use with the oldest going back to 2001 for use of the mark in relation to providing newsletters in the fields of business and finance via e-mail and providing online newspapers in the business and financial fields. Complainant generally implies that it established enforceable common law rights through its supposed “coining” of the term in 2001 and consistent use of the terms since that time.”
“Complainant argues that it has continuously used the DEALBOOK mark since as early as October 8, 2001 and had thereby developed sufficient common law rights in the mark.”
“In addition to the length of time a common law mark has been in existence, other relevant evidence normally supporting such a claim includes the amount of sales under the mark, the nature and extent of advertising, the level of media recognition, and survey data on consumer awareness.”
“In its Additional Submission Complainant alleges that from 2001-2002 it launched an aggressive advertising campaign about the DEALBOOK offerings which cost an estimated $120,000. Further, Complainant argues that it has since spent over $300,000 more on advertising and marketing its DEALBOOK mark. Complainant notes that in 2007 it won a “Webby Award” for “best business blog” and a “SABEW” award for overall excellence, and an “Eppy” award in 2008 for “best business blog.”
“Further, Complainant submits that more than 160,000 people currently subscribe to the “DealBook” daily newsletter and that the DealBook newsletter now has more than 2.5 million unique monthly users.”
After reviewing the facts the panel found:
“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.”
“”As Complainant was computer savvy regarding internet usage and domain names as well as knowledgeable concerning trademark law, Complainant’s failure to secure and register the disputed domain name or to seek governmental registration of its mark until 2006 supports a conclusion that Complainant did not deem that it had any exclusive rights to enforce until that time.””
“”Thus Respondent’s registration and use in 2004 predate Complainant’s rights in the mark.”
“While registration of a domain name before a Complainant acquires trademark rights is not specifically identified in the UDRP Policy as an automatic defense to a complaint, the Panel does not believe that the intent of the Policy requires a Panel to move forward on a complaint when the Complainant’s rights in the disputed domain name are at best junior to the rights of the Respondent.””
“”The Panel does believe that the circumstances of this case are the type that support a decision for the Respondent based on laches.”
“”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. The doctrine does not set any bright line in regards to the amount of time that must pass prior to the effectiveness of the doctrine’s implementation but instead bases the application of the doctrine on the particular circumstances in each case. Thus it is said that a party who “sleeps on his rights” may sometimes be barred by his own inactivity from asserting those rights. While laches is not expressly recognized in the UDRP Policy as a defense to a domain name complaint, some Panel decisions have recognized its availability when a particularly compelling set of facts have been present. 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 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.“””
So Mr. Berryhill who represented NameAdminstration has finally gotten a UDRP panel to understand that laches, being an equitable defense is applicable to domain holders rights against trademark holders.
Great job, great decision.
“So Mr. Berryhill who represented NameAdminstration has finally gotten a UDRP panel to understand that laches, being an equitable defense is applicable to domain holders rights against trademark holders.”
I wish I could take credit for that, but no.
There have been some “laches-like” arguments that have gotten minimal traction in the past, but in general it has been a non-starter as a defense. I used to argue it quite a bit since, good golly, it is a proceeding in equity.
Normally, if the domain name has been registered for a long time, I tend toward an equitable reliance interest, which is a half-step toward laches, but the average UDRP panelist will shutdown the thought process if you say the “l word”.
So, the panel pretty much went off on their own toot here. MJ and I were both pretty surprised.
On reflection, though, I can see how maybe it was a less effective argument to make in the first few years of the UDRP. After all, you can’t say, in 2001, that someone engaged in undue delay by not pursuing a course of action which didn’t exist until the end of 1999, and some experience with it.
But maybe it’s also an indication that, now that the UDRP has been around for just over a decade, it may be more viable as a defense.
“In addition to the length of time a common law mark has been in existence, other relevant evidence normally supporting such a claim includes the amount of sales under the mark, the nature and extent of advertising, the level of media recognition, and survey data on consumer awareness.”
I found that quote extraordinary.
It seems unlikely that an entity as savvy as the NY Times would be negligible to protect it’s interests or trademarks and not register that name!? That to me is the crux of the decision in favor of NA. It’s as a sleeping giant wakes up one day and decides it’s hungry.
While I congratulate NA in it’s success, the question for us little guy’s is how much impact does a decision like that way in favor of future complaints/resolutions, not having the counsel or resources that NA has, and the rather irregular decisions made by “UNIFORM” Domain-Name Dispute-Resolution. Rather little, me thinks.
Edit: “way in favor” should read weigh in favor.
But maybe it’s also an indication that, now that the UDRP has been around for just over a decade, it may be more viable as a defense.
—–
I guess its nice to see them apply some common-law principles to their reasoning- and you’re probably selling yourself short on your share of the credit here- but really, based on some decisions they’ve made in the past, it’s clear that they’re rooted in nothing more than the capricious mood of the arbiter, that day. Haven’t some UDRP decisions in the past explicitly said that they aren’t liable to one another for establishing precedent?
Man, I do wish I could recall that one UDRP, not too long ago, where the arbiters decision amounted to nonsensical gibberish, phrased so it appeared to be legalese. It came off as is he were trying to bullshit his way through a process he completely didn’t understand.
Does anyone recall that decision? The one where the arbiter typed many words, but they contained no logical substance whatsoever? Just strings and strings of randomly constructed, unrelated notions that had absolutely no meaning?
“not having the counsel or resources that NA has”
There are no “little guys”. My phone rings when it’s called.
Very generous statement, I will keep it in mind should I need counsel.
“There are no “little guys”. My phone rings when it’s called”
Very generous statement indeed. I will also keep that in mind too. However, that does not reflect the fact that good counsels like thyself, dear Berryhill, are a bit more expensive (way more expensive) for little guys who have not had millions of dollars in domain sales.
Any recourse??
congrats JB. It makes sense as we get more and more domain names having double digit birthdays that this comes into play.
I’ve been commenting elsewhere, but I don’t think this is as big of a deal as people think. (No offense to John!) I’ve got some explanation on my blog at http://udrp-attorney.com/2010/11/23/dont-wait-too-long-the-doctrine-of-laches-the-udrp/ but the gist is that this decision seemed to hinge more on the NYT’s lack of evidence on their common law rights to the “deal book” trademark. The Panel seems to be invoking a laches-like idea when they really mean to say “this looks like RDNH.” (Which of course means basically nothing.) My thought is the “deal book” trademark is pretty dang weak to begin with, and the Panel is likely correct in its assumption that NYT “deemed” that it didn’t have rights to that phrase in 2004 (or whenever). The reality is NYT could have provided evidence of rights in the mark, but it did not do so to the satisfaction of the Panel (which noted the evidence was from 2007/2008, post-registration by Respondent). So I think this is a “first prong” decision, really, and not a strong laches case. A strong laches case would be where the complainant proved up all the elements of the UDRP and THEN the panel said “you waited too long, KTHXBAI!” Just my two cents.
Hats off to you John. As we discussed earlier, my favorite part is:
“While registration of a domain name before a Complainant acquires trademark rights is not specifically identified in the UDRP Policy as an automatic defense to a complaint, the Panel does not believe that the intent of the Policy requires a Panel to move forward on a complaint when the Complainant’s rights in the disputed domain name are at best junior to the rights of the Respondent.””
This essentially re-opens the analysis under the 1st element to what it really should be (instead of the text vs. text rule now in place).
I am happy that John and MJ got the laches issue across to the panel. Ari, Zak, John, I and I am sure many other domain attorneys have been trying this for several years.
I do have a concern that (as with most pro-domainer decisions), the conservative panelists out there are no doubt already refining their arguments to get around this one.
Paul
as far as i’ve seen, one thing you can say in favour of the prolific domainers is that they’re not trying to game the udrp process to block or acquire domain names. this is more than i can say for some of the complainants. from the facts described, it certainly seems like nyt was trying to game the udrp process here.
nyt could just as easily change the name of their vastly successful business blog to something else, e.g. to something for which the domain name equivalent is unregistered and less prone to confusion with other existing or unregistered domain names. after all, if this is really a trademark dispute, then causing confusion in exisiting or prospective nyt consumers should be the focus. would nyt lose blog readers if they change the name of their blog? then consider: would na lose traffic?
nyt readers know where to find nyt content- on the nyt site. and i doubt the nyt ad campaigns for their blog left any ambiguity about that. but address bar “type-in search” is a bigger pool of consumers than existing or prospective nyt readers. and that’s what na targets. and na has been active in that market for several years before nyt was even aware of it. nyt is waking up to this now. laches is sometimes defined as “sleeping on your rights”. some of these complainants have been sleeping alright. whether they have rights is another matter.
perhaps another defense theory in these udrp cases could be something similar to what forms the basis of concepts such as “exhaustion of remedies”, namely, were there other alternatives? did the complainant have other courses of action available that would be as effective as a udrp decision in achieving the desired result, but less burdensome for everyone involved?
should udrp be a last resort? or a default first step?
“John and MJ”
Heh, ‘my secret weapon’.
“good counsels like thyself, dear Berryhill, are a bit more expensive (way more expensive) for little guys who have not had millions of dollars in domain sales.”
It really depends on the circumstances. If the point is “I want to make a lot of money and want you to work for free” then, no, it doesn’t work that way. However, Paul Keating and I are both currently working pro bono on a piece of UDRP related litigation in which we believe an important principle is at stake.
I’ve never said “get lost” to someone who had a quick and easy question (although whether and when I might reach that email if you are not on my whitelist can be a chancy proposition), and I’m sure the situation is similar with Paul, Ari, Zak, Stevan, Steve, Bret, Brett, Enrico, and others in this area. If you have a simple question, you might get a simple answer. If you have a complicated question which you thought was simple, then you can find out whether it is a more complicated question than you thought.
There have been several situations where people have had a good position, and neither of us could afford to have me drop two or three days on it, but where I have been able to point them in the right direction and/or review and punch up a pro se filing for rates which, if you can’t afford them you are living on cat food already.
The calls that I really try to get through in under five minutes are where someone has an obvious famous trademark typo, received a c&d letter and wants to know “how much can I get from them?” If that’s the situation, don’t waste my time. Also, if you are having an argument about a $500 domain deal which went south, don’t bother.
In low fee circumstances, if you have a strong position and are being pushed around by someone who meets my “jerkwad” criteria, if an important principle is at stake, or if your circumstances otherwise meet my “fun” criteria, then we can usually work something out. The other type of situation is where your particular circumstances involve a fact pattern or principle which, if established, would be generally helpful to others, then you can be the crash test dummy for an argument we’ve been wanting to make in another dispute.
The good news is that if you don’t have millions of dollars, I can pretty much guarantee that, whatever happens to you, you aren’t going to lose millions of dollars.
“A strong laches case would be where the complainant proved up all the elements of the UDRP and THEN the panel said “you waited too long, KTHXBAI!” Just my two cents.”
Bret, your point is well taken.
I would add that domain registrants should keep track of every piece of correspondence and email they ever get in relation to a domain name. The other point usually made in connection with laches is failure to act on notice.
What I see with increasing frequency are businesses that will send some sort of correspondence on a domain name, receive a response, and then, years later, after a change of management and outside law firm, will send a “we recently found that you have registered example.com”. The institutional memory of some organizations is simply awful. Take a look at the commentary on prior correspondence in, for example:
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0779.html
http://www.wipo.int/amc/en/domains/decisions/text/2010/d2010-0542.html
Frequently, someone inside an organization will engage in correspondence with the registrant years before the matter is “rediscovered” and given to outside counsel. With that sort of thing in your back pocket, you can inflict a lot of damage on the other side.
Lol, Fantastic reply. Thanks for taking the time to do so. Pls put me on your whitelist. My name’s Caesar, and you can use me as a crash test dummy any time you want, if the need arises, as I am sure it may, sooner or later, :-))
Cheers
I second John’s comments about answering questions. We all often spend time responding to questions and if it can be over and done with in 30-45 mins I personally give the time away, partly because I hate billing but more because I enjoy what I do. Most recently I spent a few hours helping the registrant of a domain who had defaulted because the opinion was among the worst I have seen in awhile. We also openly share our time with each other when we are working on thorny issues.
If you have a good case with good facts that fits nicely into an issue that John, Ari, Zak, Bret, Enrico or I have been dying to press, you can always work out a deal of sorts with any of us. Just don’t ask us to work for pennies while your living the good life.
As to laches, John’s point about keeping correspondence is vital.
I would add that you should also keep track of what you spend on the domain or any development involved in continued use. Laches is an equitable defense and if you have changed your position or spent money in reliance on the absence of a claim, it helps your case substantially.
For those interested in reading more about laches in the UDRP context, panelist Neil Brown has a well written article on the topic which he sends to anyone asking.
Paul
As Paul said Mr. Neil Brown has published an excellent artcile on this case on and here is a link to it
go read it:
http://www.domaintimes.info/newsletter/nov10/nov10_1.htm