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February 7, 2011 / Nate Harris

Panel Suggests Laches Relevant In Denying Kaspersky Complaint

Summary of Kaspersky Lab Zao v. Paul Bonsey / LeByte
(Nat. Arb. Forum Claim No. 1363673)

Filed: December 15, 2010; Decided: February 1, 2011 (Panelist: Jeffrey M. Samuels)

Disputed domain name: <kaspersky.us >

The Parties

Complainant Kaspersky Lab Zao (“Kaspersky”) makes and sells anti-virus software that protects over 300 million users around the world. It owns several trademark registrations in the U.S. and in Europe for the mark KASPERSKY; those registrations predate the registration of the disputed domain name.

Respondent Paul Bonsey registered the disputed domain name on July 17, 2004. When a web browser attempts to access the disputed domain, a login box appears requesting the user’s credentials; access to the website is impossible without them. According to Mr. Bonsey, he has been a reseller of Kaspersky products for eight years, and uses the disputed domain as a portal for his customers to access customer support and place orders. Roughly a year after Mr. Bonsey registered the disputed domain, a representative of Kaspersky called him to discuss his reason for doing so. However, Kaspersky never followed up or took any further action against Mr. Bonsey until the filing of this complaint.

Identical or Confusingly Similar

“The Panel concludes that the disputed domain name [ . . . ] is, for intents and purposes, identical to the mark KASPERSKY,” in which Kaspersky has rights.

Rights or Legitimate Interests

As Mr. Bonsey is not using the disputed domain in a public sense, he cannot be said to be making a bona fide use of the domain. Furthermore, there is no evidence Mr. Bonsey is known by the disputed domain name, or that he is making a noncommercial or fair use of the domain name.

Accordingly, the Panel finds that Kaspersky has met its burden of proving that Mr. Bonsey lacks rights or legitimate interests in the disputed domain name.

Bad Faith

As the Panel understands it, Kaspersky argues that Mr. Bonsey intentionally attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion.  However, “[t]he evidence, as set forth above, does not support a determination that Respondent registered the domain name with the intent to be a cybersquatter or to unfairly trade on Complainant’s goodwill.”

The Panel also notes in dicta that Kaspersky’s delay in enforcing its rights played some role in the decision:

The unrebutted evidence suggests that Complainant was clearly on notice of Respondent’s business plan and of Respondent’s use of the disputed domain name for a website devoted, in part, to the resale of Complainant’s products and did not, at least initially, appear to be concerned about such use.  Over six years have now gone by and, while laches is not a defense to an ICANN dispute, such delay is relevant in applying the Policy.

For these reasons, the Panel finds that the disputed domain was not registered and used in bad faith.

Decision

Relief is denied.

Commentary

I agree with the Panel that the UDRP is not appropriate for this dispute. Of course, the reference to laches is sure to get everyone fired up. Because the decision is not founded on the laches aspect, though, I still think this is much ado about nothing.

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