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February 28, 2011 / Nate Harris

UDRP Panel Throws Laches and Octogen to the Lions

Summary of Mile, Inc. v. Michael Burg

(WIPO Case No. D2010-2011)

Filed: November 22, 2010; Decided: February 7, 2011 (Panelists: W. Scott Blackmer, David H. Bernstein, and David E. Sorkin)

Disputed domain name: <lionsden.com>

lionsden.com

The Parties

Complainant Mile, Inc. (“Mile”) is a retailer of “adult videos, sex products, and lingerie.” It operates 40 retail stores in 18 U.S. states, and operates the site <lionsdenadult.com>. It owns a trademark registration for LION’S DEN dating from 1999, with an allegation of commercial use dating back to 1971.

Respondent Michael Burg registered the disputed domain in 1995. He claims to have registered the disputed domain, along with a number of other domains incorporating the word “lion” (e.g., <lionsburg.com>) to use them for “family email, personal projects, and hobbies.” He says he selected the disputed domain name with reference to the biblical story of Daniel the prophet and the lion’s den. [How does he explain lionsburg.com, then?] However, the evidence available about the site’s history only shows that it has been used to host a pay-per-click website.

Mr. Burg claims to have been unaware of Mile’s business at the time he registered the disputed domain. He also raises the defense of laches, pointing out that he registered the disputed domain 15 years ago.

Laches

The Panel declines to follow the recent New York Times decision [blogged here] applying laches in a UDRP proceeding.  The Panel here points out that laches typically only bars recovery of damages; it does not affect injunctive relief that seeks to avoid future confusion in the marketplace. Thus, laches is not a defense per se to a UDRP complaint. However, the Panel notes that lengthy delays in filing a complaint may weaken a complainant’s arguments with respect to bad faith, or the respondent’s rights or legitimate interests.

Identical or Confusingly Similar

The Panel finds that Lion’s Den “indisputably has rights in the registered mark THE LION’S DEN,” and that the disputed domain name is “nearly identical”

Rights or Legitimate Interests

Lion’s Den has shown that, apart from a declaration submitted by Mr. Burg, there is no evidence that the disputed domain was ever used in connection with anything but a pay-per-click website. Thus, Lion’s Den has made out a prima facie case of no rights or legitimate interests.

Mr. Burg offers no evidence to counter the prima facie showing. Though his response invoked the biblical reference, his declaration made no reference to it. Mr. Burg also claimed that he had an interest in using the disputed domain for a personal website and email. Though he offered a link to archived versions of his site, access to the archived versions was blocked, apparently by Mr. Burg himself.

Accordingly, as Mr. Burg has not overcome the prima facie case, “[t]he Panel concludes that the second element of the Complaint has been established.”

Bad Faith

The Panel notes that “[t]he consensus view that the Policy requires bad faith at the time of registration of the domain name has been challenged in some recent UDRP decisions,” most recently Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions (WIPO Case No. D2009-0786). “These decisions treat the requirement to establish that the respondent ‘registered and used the domain name in bad faith’ as a ‘unified concept.'” In particular, “[t]he Mummygold/Octogen panels observed that this warranty could be breached by post-registration abuses and concluded, as expressed in Octogen, that such conduct ‘may be deemed to be retroactive bad faith registration.'”

However, after discussing the Octogen line and cases rejecting the idea of “retroactive” bad faith registration, “[t]his Panel is unwilling to overlook the plain language of paragraph 4(a)(iii) of the Policy requiring a conclusion that the domain name has been “registered” and “used” in bad faith.”

In this case, “Respondent has persuasively shown that he registered the Domain Name for personal purposes and was inspired by the biblical meaning and common usage of the Domain Name, not Complainant’s trademark.” Therefore, the registration has not been shown to have been in bad faith. “In these circumstances, where the intended use at the time of registration was noncommercial and the Respondent is not a professional domainer, the registration cannot be considered to have been in bad faith because the use to which Respondent intended to put the Domain Name, at the time of registration, could not be considered infringing.”

Furthermore, there is no evidence that Mr. Burg must have known of Lion’s Den at the time he registered the disputed domain in 1995, as the mark was only registered in 1999. “[E]ven if the Panel were to accept the Complainant’s claim of common law trademark rights in 1995, there is no persuasive evidence that the Respondent was likely aware of the Complainant’s mark.”

Accordingly, the Panel concludes that Lion’s Den has not shown that Mr. Burg registered the disputed domain in bad faith.

Decision

The complaint is denied.

Commentary

This decision seems to reject the Respondent’s “biblical meaning/personal website” story for purposes of his rights or legitimate interest in the mark, but accepts it as “persuasive” for purposes of bad faith. What gives? I’m not sure how those two positions can be reconciled.

However, I think this comes down to confusing wording, not a bad decision. While Mr. Burg’s reasons for registering the domain may be unclear, they are ultimately irrelevant in view of the fact that there is no evidence that Mr. Burg knew of Lion’s Den’s rights when he registered the disputed domain name. Indeed, there is no evidence that Lion’s Den even owned trademark rights in its name at the time.

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