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.
Last week, a unanimous three-member panel of the World Intellectual Property Organization (WIPO) held in a domain name dispute that the owner of Shocking.com had legitimate rights to the domain name <Shocking.com>, based on its long-term use in connection with an ISP. See Interbasic Holding, S.A. v. Shocking, No. D2012-0654 (June 7, 2012). The dispute involved the acquisition of the domain name as a part of a going concern business. The Respondent operates a network of ISPs, whereas the Complainant owns trademarks for fragrances. In denying the Complaint, the Panel held that: ”[t]he Panel is not convinced that the Respondent acquired the Disputed Domain name with the intent to profit from the Complainant’s trade mark. The Respondent’s business is so distinct from the business of the Complainant that Internet users or customers are unlikely to be confused as to whether the Respondent may be associated, affiliated or sponsored by the Complainant, which precludes the presumption that the Respondent acquired the Disputed Domain Name, expecting to profit from this confusion.”
In a unanimous decision of the World Intellectual Property Organization, a three member Panel denied the complaint of Johnson and Johnson in a domain name dispute filed against Webquest, Inc., the owner of the descriptive word domain name, Tucks.com. The decision came as a vindication of the rights of professional domain name investors, who register dictionary word domain names for their value as generic terms, and not for their association with known brands. Notwithstanding the proliferation of new gTLDs and the anticipated launch of new TLDs by ICANN, .com domain names remain the hottest commodity on the market. In a world where companies choose dictionary words and last names as product names, and there exists a dispute resolution process that can be subjective, domain investors often find themselves on the receiving end of administrative proceedings. Panelists are paid very little to sift through piles of evidence and conflicting arguments. Perhaps as a result, decisions can often be formulaic and interpretation of the Policy overly rigid. In this case, however, the Panel gave thoughtful consideration to the evidence, or lack thereof, in finding that the Complainant had failed to demonstrate bad faith on the part of the Respondent.
In Danshar (1963) Ltd. v. Joey Gilbert/ Daisy Li, Case No. D2011-2304 (WIPO March 11, 2012), and Floor and Decor Outlets of America, Inc. v. Anna Marie Fanelli, No: FA1430576 (NAF April 4, 2012), Lewis & Lin LLC helped successfully defend complaints brought against a former distributor of skin care products and a retail design studio, respectively. Both cases affirm the principle that a party that registers a domain name in good faith for a legitimate business use is the rightful holder of the domain name. In Danshar, the Respondent registered and used the domain name at issue for fifteen years with the blessing of the complainant’s predecessors. In Floor and Decor, the Respondent owned and operated a retail design studio under the name Floor & Decor for 22 years, 11 of those predating any use by the Complainant.