On 28 September 2010, the New York Times Company (NYTC), publisher of The New York Times since 1851, filed a UDRP complaint with the National Arbitration Forum against Name Administration Inc (BVI) (NAI), seeking transfer of the domain name "dealbook.com", which was registered in 2004.

The complaint

The basis of the NYTC's complaint was common law use of the term "DealBook" in relation to a financial website and news service offered via "nytimes.com " since 2001, and its subsequent US trade mark registrations for "DealBook" in 2008 and 2010. NYTC alleged that NAI registered the domain name to display advertisements for competitors' products and also that NAI' s broker offered to sell the domain name to NYTC for approximately $50,000. Additionally, NYTC argued that NAI was the registered owner of approximately 300,000 domain names and had demonstrated a pattern of registering domain names to profit from pay-per-click advertising and brokerage of domain names.

NAI is described in the decision as "an online media network that owns and operates hundreds of thousands of generic domain names for paid search and development purposes".1 In relation to the "dealbook.com" domain name complaint, NAI asserted that the domain name was registered as a generic term in relation to gambling, without knowledge of NYTC's use of "DealBook", and that the domain name had been used for advertising in connection with gambling and travel deals between 2004 and 2010. NAI stated that it was not aware of the purchase offer made to NYTC, and insisted that any attempts to sell the domain name were made by unknown, unauthorised parties. The response by NAI also stressed that NYTC took no action in relation to the domain name for six years in which NAI was using the domain name. NYTC did not appear to dispute this.

The panel's decision

The complaint was considered by the Honourable Ralph Yachnin (Ret), James A Carmody and Professor Darryl C Wilson, and a decision was issued on 17 November 2010.

To succeed in its complaint, NYTC was required to prove:

  1. "dealbook.com" was identical or confusingly similar to a trade mark in which NYTC had rights;
  2. NAI had no rights or legitimate interests in respect of the "dealbook.com " domain name; and
  3. NAI registered, and was using, the "dealbook.com" domain name in bad faith.

NYTC failed to establish the first element — that is, that the domain name was identified to or confusingly similar to a trade mark in which NYTC had rights. While the panel acknowledged that registration is not necessary to establish trade mark rights in a name, the panel found that NYTC had not demonstrated common law rights in the term "DealBook" prior to the filing of its earliest US trade mark application on 25 April 2006. The panel noted that length of use alone will not be sufficient to establish common law rights in a trade mark, and NYTC had failed to provide evidence to show that the general public — including NAI — should have known of NYTC's alleged rights in "DealBook" from 2001-4. Accordingly, the panel found that NAI's registration and use of "dealbook.com " in 2004 pre-dated NYTC's rights in the "DealBook" mark. As the first element was not established, the panel did not consider the second and third elements. However, the panel did make an independent statement regarding the relevance of laches to UDRP proceedings.

Laches

Laches is an equitable doctrine that "delay defeats equities"2 where a party has unreasonably delayed in asserting his or her rights to the detriment of the accused. The panel noted that laches is not expressly recognised in the UDRP Policy, however previous decisions have recognised and applied the doctrine of laches where relevant. In particular, the panel said:

The panel believes that the doctrine of laches should be expressly recognised as a valid defence in any domain dispute where 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 defence. While the panel recognises 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 defences should also be considered in evaluating the (sic) whether any relief should be forthcoming.

The panel noted that NYTC had done nothing regarding the "dealbook.com" domain name registration for approximately six years, despite claiming fame in "real space and cyberspace through use of numerous trade marks". Where a complainant is au fait with trade marks and the online world, and yet fails to take steps to protect its rights for a substantial time, the panel considered that laches should operate to bar that complainant from succeeding.

Conclusion

The "dealbook.com" UDRP complaint failed because NYTC failed to provide appropriate evidence to demonstrate its common law rights in the term "DealBook" before the "dealbook.com " domain name was registered in 2004 by NAI. This serves as a warning to practitioners to ensure that evidence provided in support of a UDRP complaint is relevant, both in time and nature.

In addition, practitioners should be aware that any unreasonable delay by a complainant may serve to prevent a complaint from succeeding. While laches is not expressly recognised by the UDRP Policy, a number of panels have considered the doctrine appropriate to take into account when deciding a domain name dispute.3 Accordingly, trade mark owners should be encouraged to proceed diligently when taking action against an offending domain name registration.

This article was originally published in Volume 13(9) of the Internet Law Bulletin and is republished here with permission.