A three member UDRP ruled in favor of CVS pharmacy against Top Investments, LLLP of Mesa, Arizona, who was represented by ESQwire.com, on the domain name Mycvs.com

The domain holder claimed that the trademark holder waited too long to file a UDRP on the domain and one of the panelists agreed.

However the other two panelist refused to acknowledge the passage of time, otherwise known as Laches, as a bar to the trademark holder.

Here is the dissenting opinion of Neil Brown:

“”I disagree with the way in which laches has been dismissed and the reasons for that dismissal.

First, it overlooks the fact that there is now a unanimous three person panel decision on the issue. That decision is The New York Times Company v. Name Administration Inc. (BVI), NAF Case No. FA1349045, where the panel noted that laches is “a valid defense in any domain dispute where the facts so warrant.”

“In a jurisdiction where there is now, perhaps, an over reliance on previous decisions, instead of deciding cases on their own facts, it is unfortunate that this decision is not given the significance that it deserves.”

“The only question should be whether the facts of an individual case justify applying the principle.”

“The majority’s reason is that a delay of 4.5 years “is not so egregious as to foreclose Complainant from prevailing[.]”

“I disagree with that statement. ”

“Such a delay is a very long time in Internet terms and in any event the significant point is not the extent of the efflux ion of time, but what Complainant did in that time that might justify its not taking action against Respondent or the circumstances that might at least be its explanation for not taking such action.”

“That test is particularly instructive in the present case as Respondent specifically raised the defence of laches in its Response; indeed, it put laches as its first defence and made it plain that its point was that “Complainant does not explain why it waited so long to initiate this Complaint”. That statement, on any reasonable test, called for an explanation from Complainant.”

“When Complainant came to reply to the Response, it simply said that laches did not apply and relied on the decision in Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2010-1144, but did not refer to the later decision in The New York Times Company v. Name Administration Inc. (BVI), (supra). ”

“It gave no explanation for the delay, no facts showing when it became aware of the Disputed Domain Name, what it did after acquiring that knowledge or why it let several years go by without taking any action against Respondent to retrieve the Disputed Domain Name.”

“It is a well-known rule of practice of virtually all judicial and quasi judicial processes that where an event calls for some sort of explanation, but the party concerned remains silent and does not contribute what can only be within its knowledge to assist the tribunal, it runs the risk of an adverse finding being made against it on that issue. ”

“That in substance is what has happened in the present case, the result being that there has been a considerable delay with no explanation given of how or why it came about. In those circumstances, the unexplained delay on the part of the Complainant, although it may not resolve the entire proceedings by itself, is a factor that should be taken into account and adversely to the interests of the Complainant.”

“It should also be noticed that it is said against the Respondent to show its bad faith that it did not use the Disputed Domain Name for setting up a website until 4 years after its registration and not until the Complaint had been filed. ”

“The passage of such a period of time may enable conclusions to be drawn about the motivation of a party, including Respondent, but if it does, the same test should be applied to both parties”

“In the present case, Respondent gave its explanation for the delay, but Complainant, despite being put on express notice that delay was a live issue, did not. In those circumstances it is difficult to see why Respondent’s delay should penalize it, whereas Complainant’s delay, without any explanation for the delay, should be seen as inconsequential.

“Rights Or Legitimate Interests

“As a more substantial issue, the Panel should, with respect, have come to the conclusion that Respondent had made a plausible showing of a right or legitimate interest in the Disputed Domain Name. That is so because Respondent has registered a three letter word or acronym that has a descriptive or general meaning and in circumstances where it is plausible that it did so, not to target the Complainant or its trademark, but to use the name for its generic value.”

“In this regard it should be noted at the outset that the UDRP process is virtually a summary proceeding and the question that falls to be answered as a contested and defended issue is whether the case against a respondent is so clear that it should be shut out and that the respondent should have its property rights taken from it under this summary procedure without having the evidence tested in the usual way. ”

“It is for that reason that it is often said that if the respondent’s case is plausible, even if not conclusive, the tribunal may well conclude that the case against it has not been made out. This is a difficult task to assess and it is instructive to see how other panels have approached the same issue.”

“The three person panel in uwe GMbH v. Telepathy, Inc., WIPO Case No. D2007-0261, cited by Respondent, was faced with a similar issue as that in the present case. This is apparent from the following extract from its decision which is worthwhile considering in full.”

“The Complainant’s most difficult hurdle is to establish that the Respondent knew of its mark when the disputed domain name was registered. Some panels (although not all) have found that it is enough if a respondent ought to have known of a complainant’s mark, when the disputed domain name is registered. (For example, in Moari Television Service v. Damien Sampat, WIPO Case No. D2005-0524, cited by the Complainant, the panel stated that a finding of bad faith can be made when the respondent “knew or should have known of the registration and use of the trademark prior to registering the domain”, and cited other panel decisions to similar effect.)

“However the Panel finds that, even on this approach to paragraph 4(a)(iii) of the Policy, which is more favorable to the Complainant, the Complainant does not succeed. The reasons for this are as follows.

Evidence that the Respondent should have been aware of the Complainant might be drawn from a number of sources. There might be such evidence if the Complainant was well-known in the Respondent’s jurisdiction; was well-known in a field or jurisdiction in which the Respondent operates; the mark was distinctively associated with the Complainant; or if it appears, on a common-sense approach and the surrounding facts, that the similarity between the domain name and mark was deliberately created. Here, there is insufficient evidence of this kind.

The Complainant argued that it is well-known in its field, and that it does business in a number of jurisdictions, including the Respondent’s (the United States of America). The Complainant gave little evidence to support these contentions. The Complainant only provided copies of two pages from its own website. Those pages contained brief statements of a marketing nature, and (in effect) reiterating its claims that it has been in business for 50 years and is the world’s leading supplier of solariums and health equipment. The Complainant provided no other evidence of its operations. Neither did it provide evidence of its business in the United States of America or otherwise, such that the Respondent should have been aware of it.

There is also little evidence that the Respondent should have been aware of the Complainant because of the field in which the Respondent operates. The Respondent speculates in domain names, and gave evidence that it registered the disputed domain name at the same time as a large number of other 3-letter domains names. The evidence of third-party interest in the letters “uwe” makes it more difficult for a finding that the Respondent was aware specifically of the Complaint’s mark when the disputed domain name was registered.

The other facts of this case do not, on balance, support a finding that the Respondent should have been aware of the Complainant’s mark. The value of “uwe” as a 3-letter combination makes the Respondent’s claim (that it did not know of the Complainant) plausible. The three letter combination “uwe” is also an abbreviation for different generic terms (like, e.g., University of West England or “Unterwasser-Electric Gesellschaft”, which formed part of the Complainant’s company name for some years). Furthermore, “Uwe” is a German first name.”

Respondent’s case in the present proceedings was that it did not know of Complainant’s trademark when it registered the Disputed Domain Name and that it did not register it with any such trademark in mind.

Complainant for its part said initially that Respondent actually knew of the trademark and registered the Disputed Domain Name to confuse people. However, in its reply to Respondent’s Response it changed that position somewhat to allege that it was “difficult to believe” that Respondent did not know of Complainant and its trademark and that it was “highly unlikely” Respondent did not know of those matters.

In such cases where there are diametrically opposed submissions the Panel can do no more than decide if Respondent’s explanation is plausible, i.e., not whether it is probable or improbable and certainly not whether it is likely or unlikely, as Complainant submits, but rather if it is fanciful, with no substance, clearly contrived or a recent invention; if it has enough substance to enable a fair minded observer to say that it is arguable or that it may well be seen to be true if there were a hearing and the evidence tested in the usual manner by cross examination and discovery, then the defence is plausible, even if some doubt remains about its veracity. If the defence is plausible, it is entirely inappropriate to shut the Respondent out in the course of a summary procedure.

With that background it is necessary to look at the facts of the present case in some detail and to decide if the defence is plausible or implausible.

In the present case, as in uwe GMbH v. Telepathy, Inc., (supra) one issue that emerged was that Complainant operated in the same jurisdiction as Respondent. That would tend to suggest that Respondent may well have come across Complainant’s name and it is certainly one factor to throw into the mix on Complainant’s side of the argument. Indeed, it must be acknowledged that Complainant is a well-known company in its field and that it conducts a successful and large chain of pharmacies. To that extent it must be said that it is likely to be well known to residents of the United States, although the extent of fame at the time the Disputed Domain Name was originally registered and at the time the Respondent acquired it is less certain.

On the other side of the scales is the criterion cited in uwe GMbH v. Telepathy, Inc., namely, whether

“the Respondent should have been aware of the Complainant because of the field in which the Respondent operates.” That criterion was not satisfied in uwe GMbH v. Telepathy, as it had registered other three letter domain names. In the present case, Respondent is not in the pharmacy industry and would thus be less likely to be aware of the trademark that someone actively engaged in that industry. It has also registered other domain names that it has used in its various computer businesses, tending to suggest that it may have registered the Disputed Domain Name with its own business rather than Complainant’s trademark in mind. Accordingly, although not unequivocal, the criterion specified in uwe GMbH v. Telepathy, Inc has not been made out in the present case.

A further criterion cited in uwe GMbH v. Telepathy, is whether there was third party interest in the same three letter word as the Disputed Domain Name. In uwe GMbH v. Telepathy, there was such interest and in the present case there seems to be more, as Respondent’s evidence shows that at least in certain quarters and probably internationally there is more use of the acronym “CVS” in its computer orientated meaning than there is in its pharmacy connotation.

Finally, the panel in uwe GMbH v. Telepathy inquired if there was another meaning than that associated with the trademark that could explain why the Disputed Domain Name had been registered and indeed, it was found that there was such a meaning. Likewise, in the present case, as has just been noted, CVS has an apparently very widely used meaning, namely “concurrent versions system,” an expression apparently referring to concurrent computer software systems. Nor is this meaning a remote one or inherently unlikely as a meaning that Respondent would have had occasion to use. It seems in fact that it fits into its line of business and it is not really surprising if it wanted to adopt it for use in its chosen field of business.

Just as those tests raised the notion that Respondent’s explanation was plausible in uwe GMbH v. Telepathy, so in the present case they may well be equally plausible although not necessarily conclusive. Respondent has certainly made a sufficiently strong case to justify the conclusion that it would be unsafe to say as a positive finding that it has no right or legitimate interest in the Disputed Domain Name. On the structure of the UDRP as it is, that is tantamount to a finding that this element of the requirements of the Policy has not been made out.

Added to this is the fact that Respondent has registered other domain names for use in its computer business and that one of them is <mycoders.com>. The evidence is that in 2003, that domain name was developed as a platform for a software development marketplace that currently hosts over 3000 developers working in 89 countries. It is also submitted by the Respondent that the Disputed Domain Name “has a natural synergy with the software coding business associated with the mycoders.com domain” and one of its exhibits shows that WIPO itself uses the abbreviation in the same sense as that claimed for it by Respondent. For present purposes, although these facts may not be unequivocal, they at least give more substance and consistency to Respondent’s case and therefore tend to suggest a legitimate reason for registering the Disputed Domain Name.

These and other matters going to show the legitimacy of Respondent’s registration of the Disputed Domain Name have also been attested to in a Declaration by an officer of Respondent who declares he has personal knowledge of the matters involved. Opinions differ, of course, as to the weight to be given to such declarations. But until some reason is given why that Declaration should not be accepted, the Panel is entitled to take it into account as part of the record and to give appropriate weight to it in its deliberations. As at present advised, it must give at least some credence to Respondent’s version of events.

For these reasons, Respondent’s case is plausible and, in a summary proceeding, a Respondent can do no more. There should therefore be a finding that it has not been established on the balance of probabilities that Respondent has no right or legitimate interest in the Disputed Domain Name.”