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Laches as a UDRP Defense

By Eric Misterovich

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, 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, 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 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 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



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