Lewis & Lin obtained a victory in a UDRP domain name action filed against our client by Laminex, Inc., the owner of the website at <IDshop.com>. The complainant owned a United States trademark registration for the ID SHOP mark, registered in 1989, and provided photography services and supplies associated with identification devices such as ID cards, name badges, and electronic access cards.
Our client, the respondent, had owned and operated a novelty ID shop, housed at <theIDshop.com> since 1998. The website <theIDshop.com> generated over $2 million in sales, serving tens of thousands of customers while employing dozens of employees and expending over $100,000 for promotional purposes.
In addition to arguing that the complainant had failed to meet its burden under the UDRP, Lewis & Lin also argued the complaint failed on the basis of laches. Laches is an equitable legal doctrine that provides a defense when a brand owner has unreasonably delayed in asserting its rights, and thereby unduly prejudices the defending party.
Although laches has rarely been successfully used as a defense in a UDRP proceeding, the three-member UDRP panel agreed with Lewis & Lin that it was appropriate under the circumstances. The respondent registered the domain name in 1998 and has consistently been in business since then, investing substantial sums promoting the business through the <theIDshop.com> domain name. Although the complainant had a trademark with the USPTO for the ID SHOP mark since 1989, it offered no explanation for the 14-year delay in bringing its complaint. The panel concluded that in light of the “unexplained delay in bringing this proceeding, and the demonstrable harm to Respondent should the domain name be transferred,” relief was denied under the doctrine of laches.
The case, Laminex, Inc. v. Yan Smith, FA1211001470990 (N.A.F. Jan. 7, 2013), can be accessed here.