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November 23, 2010 / Nate Harris

Times A Wastin’: Laches Invoked in Denying N.Y. Times’ Complaint

Summary of The New York Times Company v. Name Administration Inc. (BVI)
(Nat. Arb. Forum Claim No. 1349045)

Filed: Sept. 28, 2010; Decided: Nov. 17, 2010 (Panelists: Hon. Ralph Yachnin (Ret.), James A. Carmody Esq., Prof Darryl C. Wilson, Chair)

Disputed domain name: <dealbook.com>

dealbook.com

The Parties

Complainant The New York Times Company (“NYT”) is the newspaper of record. Among its many world-famous media offerings, NYT asserts that one of its most successful content portals is DealBook, a business-oriented news blog run by NYT columnist Andrew Sorkin. Mr. Sorkin claims to have coined the term “DealBook” in 2001, and NYT owns registrations dating to 2006 for the mark DEALBOOK.  Notably, the evidence offered by NYT to demonstrate its rights in the mark were limited to its trademark registrations and its assertions regarding the coining of the term.

Respondent Name Administration Inc. (BVI) (“NAI”) registered and began using the disputed domain in 2004. NAI’s business model involves monitoring the internet for available domain names and registering generic domains when they become available for sale. NAI offered evidence that it started out using the disputed domain in connection with a gambling-related website, and pointed out that “deal” and “book” are generic terms relating to gambling. NAI later pointed the disputed domain at websites intended for those wishing to “book” travel “deals.” At present, the disputed domain features advertisements for products and services that compete with those offered for sale by NYT.

Identity or Confusing Similarity

NYT’s trademark registrations are sufficient to prove its current rights in the DEALBOOK mark. Furthermore, NYT offers evidence that it spent several thousand dollars advertising its DEALBOOK services prior to the registration of the disputed domain. It also notes that the blog has won critical awards, and currently has 160,000 daily users and over 2.5 million unique monthly users.

However, for the critical period prior to the registration of the disputed domain, NYT’s evidence was limited to advertising expenditures. That’s not enough, says the Panel, which points to the fact that NYT waited until 2006 to register its DEALBOOK mark as evidence that NYT must not have believed it had exclusive rights in the mark until then. For these reasons, the Panel finds that NAI’s rights in the disputed domain predate NYT’s rights in its mark.

Laches

Finding that NYT has “unreasonably delayed in asserting [its] rights to the detriment of [NAI]”, the Panel states its belief that NYT is barred by the equitable doctrine of laches:

While laches is not expressly recognized in the UDRP Policy as a defense to a domain name complaint, some Panel decisions have recognized its availability when a particularly compelling set of facts have been present. The Panel believes that the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the 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 defense. While the Panel recognizes 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 defenses should also be considered in evaluating the whether any relief should be forthcoming.

[ . . . ]

This is not a case of passive holding by the Respondent or an instance of an unsophisticated Complainant. Complainant notes that it has been in business for more than a century and half and has developed worldwide fame in both real space and cyberspace through use of numerous trademarks. Where such a Complainant fails to police its claimed mark and does nothing for a substantial time while a Respondent develops an identical domain name for its own legitimate purposes, laches should bar that Complainant from turning a Respondent’s detrimental reliance to its own unjust benefit.

Decision

The relief requested is DENIED.

Commentary

The laches discussion here should come as no surprise to those familiar with other decisions in which Panelist James A. Carmody Esq. has taken part. See, e.g., Ace Cash Express, Inc. v. R9 DomainGuard Proxy Service (Nat. Arb. Forum Claim No. 1095275). Mr. Carmody has been pushing for a laches defense for at least 10 years. Check out this dissent he wrote back in 2000:

I respectfully dissent from the Decision of the majority of the Panel for several reasons. First of all, the Respondent registered the domain “BANKU.COM” on February 20, 1997, nearly three and one half years prior to the commencement of this proceeding. ICANN UDRP proceedings are, within the structure of specific Policy provisions, essentially equitable in nature due to the types of relief available. I would hold that Complainant sat on its rights for too long to be entitled to relief from this Panel. Such a delay of claim assertion constitutes the equivalent of laches in the fast moving world of the Internet.

While I don’t disagree with Mr. Carmody’s position on laches, the Panel didn’t really need to go down that path in this decision. NAI’s registration predates NYT’s mark, so there is no bad faith registration. If the case can be disposed of according  to the explicit terms the UDRP (agreed to by all domain registrants), is there a reason to import principles of equity from case law made by courts?

Epilogue

<dealbook.com> points to a click-through site, although the links seem to point to travel and gambling sites, not ones that compete with NYT’s blog.

UPDATE: Check out the comments below for some further discussion by myself and the always-insightful Bret Moore of udrp-attorney.com, who has written a great post on this decision here.

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5 Comments

  1. Bret Moore / Nov 23 2010 6:11 am

    You had the same idea I did, although I appreciate your research into that particular panelist’s past statements. Good stuff. The domainer blogs I follow seem to be fairly excited by this decision, but like you, I’m not sure that it’s really all that exciting.

    http://udrp-attorney.com/2010/11/23/dont-wait-too-long-the-doctrine-of-laches-the-udrp/

  2. Nate Harris / Nov 23 2010 7:57 am

    Thanks Bret. Another thought I had this morning was that these findings of earlier rights and laches push against each other. The Panel doesn’t really narrow down when NYT’s rights arose, just sometime after 2004 but no later than their registrations in 2006. Assuming they arose later rather than earlier, then you’re only talking about roughly 4 years. That could be enough for a finding of laches, but it’s really not enough to presume laches without more. For example, there’s no evidence about whether NYT has been busy enforcing its rights against others. That kind of “serial enforcement” will toll laches in some circumstances.

    Ultimately, I think this is a case of a Panel (or maybe just a Panelist) pushing for wider recognition of laches in a decision that doesn’t really support it. It argues:

    In the instant proceeding the Respondent emphasizes on numerous occasions that it has held the domain name and used it in connection with its website offerings for in excess of six years and rightfully posits the question of what should be made of the fact that the Complainant has done nothing during that time despite claiming that its development of the identical trademark and subsequent use predates that of the Respondent. (emphasis added)

    In other words, after their earlier finding that NYT didn’t have trademark rights in 2004, they’re saying that NYT has slept on its rights since 2004 (“in excess of six years”). How does that work?

  3. mark / Nov 25 2010 3:30 pm

    The panel quoted the NYT’s allegation that NYT claimed first-use trademark rights in 2001 but only filed for the first TM in 2006 .. 6 years there. In any event, while laches may be open to subjective interpretation, the respondent in this case couldn’t have known about the NYT’s non-existent TM in 2004 so there is no bad faith there and they certainly predate the NYT’s TM. The best the NYT can do here is build a time-machine.

  4. Nate Harris / Nov 29 2010 9:40 pm

    Mark:

    Are you saying that the laches period was six years? As I understand it, laches is a delay in enforcing your rights (meaning the clock doesn’t start until you have rights), not in perfecting your rights by registration or other means. At any rate, I agree that, on this evidence, the respondent’s rights predate NYT’s rights.

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