Laches as a UDRP Defense featured image

Laches as a UDRP Defense

by Eric Misterovich

Partner

Internet Law
4550619028_b0d0180f6f_z

Photo credit: Titoy’ 

Before 2013, a UDRP case had never been decided solely on laches. That is, until Laminex, Inc. v. Yan Smith, a case involving a domain dispute over theidshop.com, in which panel did not even consider the case on the merits.

What is Laches?  

Laches is a concept from the law of equity. The laches doctrine bars claims brought after an unreasonable time such that it harms the opposing party. Laminex involved a fifteen-year-old online novelty ID shop using the domain name TheIDShop.com, until a company in 2013 claimed it should hand over the domain. The panel, however, found that the domain belonged to the respondent, who invested substantial money promoting its business and advertising it on the Internet as theidshop.com for more than fifteen years

The history of Laches as a defense in a UDRP proceeding

Laminex is not the only case decided solely on the laches doctrine since 2013. A panel dismissed a case brought by Big Texan Steak Ranch over the domain name TheBigTexan.com because the company waited thirteen years to file the complaint. Big Texan Steak Ranch proved the first element of the policy, but lost solely on laches.

Before Laminex and Big Texan, one UDRP panel discussed laches in length in the 2010 case, Craigslist, Inc. v. Craig Solomon Online Servs., Although not decided solely on laches, the panel held that laches could be a valid defense in a domain name dispute, recognizing that such a delay “can often have the effect of eroding or undermining the complainant’s arguments” and cause difficulties in deciding a UDRP case on the merits. The panel discussed in length the three elements that a defendant must demonstrate to successfully defend itself on the basis of laches:

  1. A delay in asserting a right or a claim;
  2. That the delay was not excusable; and
  3. That there was undue prejudice to the party against whom the claim is asserted.

The respondent in Laminex successfully showed all three. Despite having the opportunity to do so, the complainant offered no explanation for the fourteen-year delay in bringing the complaint. In light of the unexplained delay in bringing this proceeding, and the demonstrable harm to Respondent should the domain name be transferred, the Panel concludes that under the doctrine of laches, relief should be denied.

Pulling everything together, remember:

  • Laches is gaining notoriety as an affirmative defense against domain name disputes
  • Long delays in bringing a UDRP action greatly harm otherwise strong cases.

It can be difficult tackling domain name disputes without the right expertise. For more information about using Laches as a defense, or to ensure you do not wait too long to start a domain name complaint, contact Revision Legal’s Internet attorneys through the form on this page or call 855-473-8474

 

 

Extra, Extra!
Recent Posts

Trademarks: What is the Difference Between the Circle R and TM Symbols?

Trademarks: What is the Difference Between the Circle R and TM Symbols?

Trademark

The Circle R and the TM symbols both relate to trademarks and both can be physically placed on products, packaging, advertising materials, websites, etc. The Circle R symbol is an “R” enclosed in a circle (®). While both are trademark-related symbols, there are different eligibility requirements for use, meanings, and implications. Here is a quick […]

Read more about Trademarks: What is the Difference Between the Circle R and TM Symbols?

Is Your E-Commerce Advertising in Compliance With Existing Laws?

Is Your E-Commerce Advertising in Compliance With Existing Laws?

Internet Law

E-commerce businesses must comply with federal and State-level advertising laws and regulations. This is true of any business. But e-commerce businesses face special challenges because there is a whole array of potential methods of innocently, accidentally, or intentionally violating advertising laws. These include the potential to engage in false and deceptive advertising practices, such as […]

Read more about Is Your E-Commerce Advertising in Compliance With Existing Laws?

Put Revision Legal on your side