Domain Name Case Recognizes the Doctrine of Laches

A recent decision from the National Arbitration Forum (NAF) in case regarding domain names, The New York Times Company v Name Administration Inc (BVI) no. FA1009001349045, resulted in the allowance of greater consideration of a defense based on delay in filing a UDRP.

A recent decision from the National Arbitration Forum (NAF) in case regarding domain names, The New York Times Company v Name Administration Inc (BVI) no. FA1009001349045, resulted in the allowance of greater consideration of a defense based on delay in filing a UDRP.

The Panel decided that laches or delays in bring proceedings, may well be an absolute defense to a claim. In the past, parties who have registered domain names and used them for years have lost the right to the domain name in favor of a trademark holder. Domain name holders have objected and claimed that the delay was unfair and should bar the claim.

The conclusion of the Panel is that the doctrine of laches should be expressly recognized as a valid defense in any domain name dispute where the facts so warrant it.

In the recent case the Panel pointed out that the Respondent registered the domain name over six year ago and during this time had used it to develop its web business. In contrast, the Complainant was passive during this time.

In light of this case there will be a substantial change in the UDRP, which means that in appropriate fact situations, laches will be available as a defense and may defeat the trademark holder’s claim.

However, it should not be assumed that the laches defense will succeed whenever there has been a delay by the Complainant. Each case will be decided based on its own facts and circumstances.

On the other hand the passivity of the Complainant to assert its rights can provide a decision in favor of the Respondent.

You may read more about the judgment here!

// Monika Colak