Later Is Better Than Never – Delay In Filing UDRP Complaints

By Steve Levy

Maybe you just started a new in-house job, or your company just made a new acquisition or merger. Maybe, in your due diligence, you noticed a domain name that uses an important company trademark and resolves to a sketchy looking website. Maybe you thought to yourself, “hmm, this domain is a bit old, I don’t know if we can still go after it.” Well, maybe you’re in luck! UDRP panelists regularly order transfers against long-registered domain names if the case otherwise meets all of the Policy standards.

In a recent case involving the famous COACHELLA trademark for music festivals, the panel awarded a transfer of the domain name despite it having been registered ten years ago. The panel mentioned that the “Complainant does not explain why it took so long to move against Respondent” but it did say that “[i]t might be assumed that the disputed domain name was inactive until recently.” The decision did note that the domain name’s website copied the Complainant’s logo and certain copyrighted images from its legitimate site. So, despite the Complainant’s delay, bad faith registration and use were found and the domain name was ordered to be transferred.

This follows the general practice of UDRP Panels rejecting the legal doctrine of laches which is defined as “unreasonable delay in making an assertion or claim”, especially where the delay results in harm or other prejudice to the opposing party. Cybersquatting, under the UDRP, is considered an ongoing violation of trademark rights and so the delay in filing a case is usually not relevant as the harm to the brand owner is current (the cybersquatted website is still active or phishing emails are still being sent, etc.) Another related issue is when the current owner acquired the disputed domain name. Even if a domain was originally created many years ago, its sale or other transfer to a new owner may start the clock again.

However, an exception to the above might occur if a very long delay is cited by a respondent as causing harm to them. For example, if they’ve built a legitimate business around the domain name in reliance on the brand owner’s inaction this could cause a panel to deny a case. Further, a respondent might claim that they’ve been prejudiced because evidence has become stale or unavailable due to the brand owner having waited a long time to bring a claim (this can affect a complainant’s own evidence as well since company employees move on, files are lost, memories of events fade, etc.). Finally, delay could indicate that any harm claimed by the brand owner is minimal since they would have acted faster if it had been significant.

The lessons here are twofold. First, take action as quickly as possible upon discovering a cybersquatted domain name. Second, don’t be discouraged by a long passage of time if you notice an otherwise valid target. If the harm is ongoing and you can meet the requirements of the Policy, that seemingly old domain name might still get transferred to you.

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