The Complainant is Charter Communications, Inc., attn: David N. Schachter, St. Louis Missouri, United States of America, represented by Sherman & Howard, LLC, United States of America (or “United States”).
The Respondent is CK Ventures Inc. / Charterbusiness.com, c/o Nameview Inc., Whois IDentity Shield, St. Michael, Barbados, represented by ESQwire.com Law Firm, United States of America.
The disputed domain name <charterbusiness.com> (“the Domain Name”) is registered with Nameview Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2010. On February 16, 2010, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On February 19, 2010, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 26, 2010 including the registrant disclosed by Nameview in its registrar verification response. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 22, 2010. The Response was filed with the Center on March 22, 2010.
The Center appointed Thomas Legler, Scott Donahey and The Hon Neil Brown QC as panelists in this matter on April 26, 2010. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On April 10, 2010, Complainant requested leave from the Panel to file a supplemental response. The Panel subsequently granted Complainant the right to file a very brief supplemental response on or before June 2, 2010, restricted to any new element which was not already covered by its previous submission(s). On June 2, 2010, Complainant filed its supplemental response and on June 7, 2010, Respondent filed a submission in reply to said response.
Complainant Charter Communications, Inc. is a broadband communications company in the United States. It provides a full range of broadband services including advanced video entertainment programming, high-Speed Internet access as well as local and long distance calling. Under the trademark CHARTER BUSINESS Complainant provides broadband communication solutions to business organizations. Complainant registered the following US trademarks:
CHARTER BUSINESS, No. 3357069, registered on December 8, 2007;
CHARTER BUSINESS BUNDLE, No. 3339675, registered on November 20, 2007;
CHARTER BUSINESS CABLE TV, No. 3530911, registered on November 11, 2008
CHARTER BUSINESS HD, No. 3530913, registered on November 11, 2008;
CHARTER BUSINESS TELEPHONE, No. 3530912, registered on November 11, 2008;
CHARTER BUSINESSDIGITAL TV, No. 3579412, registered on February 24, 2009;
CHARTER BUSINESS HIGH SPEED INTERNET, No. 3579071, registered on February 24, 2009;
CHARTER BRINGS YOUR HOME TO LIFE, No. 3,574,606, registered on February 17, 2009;
CHARTER CABLE TV, No. 2,461,485, registered on June 17, 2001;
CHARTERCOMMUNICATIONS, No. 2,509,312, registered on November 20, 2001;
CHARTER COMMUNICATIONS, No. 2,121,184, registered on December 16, 1997;
CHARTER CONNECT, No. 3,110,566, registered on June 27 2006;
CHARTER DIGITAL CABLE, No. 2,461,484, registered on June 19, 2001;
CHARTER DIGITAL HOME, No. 3,702,246, registered on October 27, 2009;
CHARTER DVR, No. 3,219,707, registered on March 20, 2007;
CHARTER HDTV, No. 3,196,133, registered on January 9, 2007;
CHARTER HIGH-SPEED, No. 3,221,579, registered on 27 March 2007;
CHARTER HIGH-SPEED SECURITY SUITE, No. 3,045,377, registered on January 17, 2006;
CHARTER MEDIA, No. 3,038,774, registered on January 10, 2006;
CHARTER MEDIA ADVANTAGE, No. 3,230,789, registered on April 17, 2007;
CHARTER ON DEMAND, No. 3,381,776, registered on February 12, 2008.
Respondent is CK Ventures who registered the Domain Name on March 22, 2003 after it expired and was deleted. Respondent has used the Domain Name in connection with the offering of goods and services by displaying Yahoo! auto-generated pay-per-click (“PPC”) advertisements related to the term “business”. It appears that Respondent has registered hundreds of descriptive domain names incorporating descriptive terms in order to generate PPC revenues.
According to Complainant, Charter Communications, Inc. (“Charter”) is a leading broadband communications company and one of the 5 largest cable operators in the United States. The Charter brand has been in extensive commercial use in the United States since at least as early as 1994 and is protected by over 35 United State Federal trademark registrations. Charter also for many years used and had registered the term “Charter Business Network” to identify its business operations.
In addition to its Federal trademark protection, Charter further spends significant sums on print, online and broadcast advertising associated with the Charter brand. According to Complainant, the Charter brand is extremely well-known and recognized throughout the United States and qualifies as a famous mark under Federal Lanham Act.
In 2003, Respondent without Complainant's knowledge, consent or permission, registered the domain name <charterbusiness.com>. Complainant has further at no time granted any license or permission to any entity affiliated with the disputed domain name to utilize or display the CHARTER trademark or the CHARTER BUSINESS trademark in any form of business enterprise.
It is indisputable, according to Complainant, that a domain name whose sole and dominant element is the term “charterbusiness” is virtually identical to Charter's Federal trademark no. 3357069 for CHARTER BUSINESS as well as 6 other registered trademarks of Charter which all begin with the “Charter Business” terminology. Such a domain name embodies the core branding element i.e. “Charter” used in virtually all the Charter's commercial operations. Any person viewing <charterbusiness.com> is therefore likely to draw the immediate conclusion that the term suggests an association with Charter goods and services.
The Domain Name is clearly designed and being operated to create this very confusion by drawing away existing and potential Charter customers. The Domain Name is not inactive or passive. It is an active click-through or pay-per-click site on which Respondent has deliberately created a façade to portray the content as if it were an official Charter domain name. The content of this illegal website goes on to magnify such confusion by offering specific links and information to topics such as “find Charter Communications employment”, “Charter jobs”, and “Charter Communications jobs”. Each of these links resolves to unrelated websites of third parties. More seriously, visitors are also directed to links to other top cable industry operators, including Comcast and Time Warner against which Charter competes for employees, and certain commercial customers.
Complainant therefore concludes that these facts clearly demonstrate that the Domain Name is identical or confusingly similar to Charter's brand and to its registered marks so that the first substantive element of the policy is satisfied.
Complainant is of the opinion that Respondent fails to satisfy the criteria for demonstrating that it has acquired any rights or legitimate interests in the Domain Name. The unknown party hiding behind the Nameview, Inc. privacy shield clearly does not use the Domain Name to operate nor has it ever operated a bone fide business or commercial entity of any type and certainly not one offering Internet telephony, telecommunications or cable services to the public. The sole function of the Domain Name is to operate as a click-through portal from which Respondent derives revenues by linking visitors to unrelated domains offering a wide range of goods and services, many of which are either fraudulently misrepresented as being authentic Charter links or are links to direct competitors of Charter, offering directly competitive goods and services to customers who were lured to the site through use of Charters' famous brand.
According to Complainant, its Charter brand has been in existence since 1994 and thus was obviously well-known long before the operation of the Domain Name. The only conceivable purpose of Respondent's use of the Domain Name is to divert traffic intended for the Complainant and thus does not constitute a legitimate interest. The use of Complainant's trademark to offer for sale or to direct customers to the products of the Complainant's competitors is objectionable and therefore not bona fide. Consequently the foregoing establishes in the eyes of Claimant that the second required element under the policy is fulfilled.
Finally, the deceptive and fraudulent conduct of Respondent is a classic demonstration of the criteria for establishing use of a domain name in bad faith. The Charter brand has become a well-known matter of public record long before the Domain Name became active. Any reasonable investigation would have revealed these facts prior to the activation of the Domain Name. Respondent not only failed to conduct such investigation so as to avoid confusion, it is submitted that the resultant confusion was in fact Respondent's sole objective in the first place.
Where the domain name is simply used to generate sponsored links to other sites so as to generate advertising revenues in which no other bona fide business is operated and the site is confusingly similar to a well-known and previously established mark, it is a classic illustration of bad faith. It has further been well established that the party engages in bad faith when it utilizes a who-is privacy service solely for the purpose of masking its true identity. Indeed, Respondent offers no contact person, phone number, address or other information that would typically be associated with a party engaging in good faith use of the Domain Name and Respondent's refusal to contact Complainant after receiving not one but two separate letters seeking to address these concerns is further evidence of bad faith. As a result, any normal effort to reach this entity to address such concerns would of course have proven futile and that of course was Respondent's objective in the first place, namely, to be unreachable.
Based on the foregoing, Complainant asserts that the bad faith element is fully satisfied.
In accordance with paragraph 4(i) of the Policy and for the reasons described above, Complainant requests the Panel that the Domain Name be transferred to Complainant.
In its Supplemental Brief dated June 2, 2010, Complainant sustains that it used the “Charter Business” brand in interstate commerce as early as May 2000 and held a valid Federal trademark registration in this term as of March 2003, i.e. at the time Respondent elected to purchase the Disputed Domain Name. That trademark was later cancelled because Charter elected to cease using the “Networks” component of the brand. This is clear evidence according to Complainant that Respondent knew or should have known of the existence of such mark when it acquired the Domain Name.
According to Respondent, Complainant admits the date of its first use of “charter business” was at April 1, 2004 which is more than one year after the registration date of the Domain Name. Each of Complainant's other marks which incorporate the word “business” also were registered long after the Domain Name was registered (between 2007 and 2009).
Nine of Complainant's other marks which do not incorporate the word “business” are also unenforceable because they were registered long after Respondent registered the Domain Name (between 2006 and 2009).
Complainant does not have enforceable trademark rights to a mark not in existence at the time the relevant Domain Name was registered. The only trademarks registered by Complainant prior to March 2003 when the Domain Name was registered are trademarks which are not identical or confusingly similar to the disputed domain. Because the mark is nearly descriptive, small differences matter and are sufficient to eliminate a finding of confusing similarity. Accordingly, while Complainant's enforceable marks do not incorporate the descriptive term “business”, the Domain Name does and, thus, the rule of small differences should apply with equal force as a significant term in dispute is descriptive. Moreover, the differences between Complainant's enforceable marks and the Domain Name are big. Respondent therefore concludes that the Domain Name is not confusingly similar to Complainant's mark so that the complaint should be denied.
As to the second element of the Policy, Respondent notes that “Charter Business” is a descriptive term composed of two words in the English language. This is demonstrated by the fact that about 20'000 third party Google results contain the term “charter business”. There is no evidence that the Domain Name was registered with Complainant's trademark in mind. To the contrary, it is undisputed that Complainant did not even commence use of its Charter Business trademark until more than a year after Respondent registered the Domain Name. Accordingly, it was impossible for Respondent to have known about Complainant's mark for Charter Business.
Respondent's legitimated interest is bolstered by the fact it uses the Domain Name to post advertising links related to the descriptive meaning of “business”, a key word in the Domain Name. PPC ad links establish legitimacy where they are selected as a result of the generic or descriptive meaning of terms contained in a domain as opposed to being selected with the trademark in mind. The use of a domain name to operate a pay-per-click search engine is a bona fide offering of goods and services pursuant to Policy 4(c)(i).
It is true that in November 2009 a few links related to Complainant's goods and services appeared on Respondent's website. These were not intended by Respondent and do not make Respondent's interest illegitimate. Respondent did not select the links. They were auto-generated by Yahoo! Out of 23 links appearing on that page, four related to Complainant. Following Complainant's notice to Respondent objecting to the links, Respondent took action to block such links from further appearing on its website. Accordingly, the links do not anyway make Respondent's interest illegitimate.
Respondent is the registrant of hundreds of domain names and is unable to monitor all links appearing on all of its domain names at all times. The evidence is that for several years, between at least 2007 and 2009 there is no evidence of any links relating to Complainant appearing on the website. The isolated appearance of a few auto-generated links relating to Complainant's business in 2009 does not spoil several years of bona fide use of a disputed domain name undisputably registered in good faith. Accordingly, Respondent is of the opinion that it has rights and a legitimate interest in the Domain Name.
With regard to the third element of the Policy, Respondent sets out that the Domain Name was registered on March 20, 2003 and that Complainant alleges that it first used the mark “Charter Business” a year later on April 4, 2004. It is well established that the Complainant cannot meet its burden of proving bad faith registration of a domain name that is registered prior to the date of the trademark application.
As for Complainant's trademarks which did exist prior to the registration of the Domain Name, there is no evidence that Respondent targeted Complainant with the registration, nor is there any evidence from which to infer bad faith. Respondent simply registered the Domain Name simply because it incorporated a common descriptive term and because it became available when it was deleted after Complainant failed to renew. This is not a case of a respondent looking to a list of trademarks to prey upon. The appearance of 4 links in November 2009 which related to Complainant's services was minuscule and isolated. Respondent registered the Domain Name in good faith and had no malicious intent with respect to the use of the Domain Name either. Finally, Complainant did not initiate these proceedings until more than 7 years following Respondent's registration of the Domain Name.
While laches is not generally recognized under the Policy, such a long delay in taking action, nevertheless, questions how confident Complainant has been regarding the success of the domain name challenge. The delay also raises the inference that Complainant did not genuinely believe that the Domain Name was registered in bad faith. Accordingly, Complainant has failed to establish that Respondent registered or used the disputed domain name in bad faith.
For all these reasons, Respondent concludes that the Complaint must be denied.
In its Response to Complainant's Supplemental Response dated June 7, 2010, Respondent indicates that all what Complainant demonstrates in its Supplemental Response is that it once had a trademark for “Charter Business Networks” and that this trademark is now abandoned. Respondent provided testimony that it registered the Domain Name when it was deleted, and that it registered the Domain Name because it believed “Charter Business” was a descriptive term related to the business of “charters”. In addition, “Charter Business Network” and <charterbusiness.com> are not confusingly similar.
The burden for Complainant under paragraph 4(a) of the Policy is to prove that
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Complainant has proven ownership of U.S. trademark rights in the mark CHARTER BUSINESS (Cert. 3357069) registered on December 8, 2007.
As to the first element of the Policy, the Panel finds, as a matter of formality, that the Domain Name <charterbusiness.com> is identical to Complainant's trademark CHARTER BUSINESS.
The Panel does not address the issue whether Respondent's Domain Name registration was prior or not to Complainant's above mentioned trademark registration (see however below, C). Indeed, registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. See: Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, and AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Respondent contends that using descriptive or generic terms for a website with sponsored advertising links is a legitimate commercial use, implicitly invoking paragraph 4(c)(i) of the Policy. Respondent indicates that it uses the Domain Name to post advertising links related to the descriptive meaning of “business”. According to Respondent, PPC ad links establish legitimacy where they are selected as a result of the generic or descriptive meaning of terms contained in a domain name, as opposed to being selected with a trademark in mind. According to Complainant, the sole function of the Domain Name is to operate as a click-through portal from which Respondent derives revenues by linking visitors to unrelated domain names offering a wide range of goods and services, many of which are either fraudulently misrepresented as being authentic “Charter” links or are links to direct competitors of Charter. This establishes the lack of any legitimate interest. Respondent answers in this respect that it is true that, in November 2009, a few links related to Complainant's goods and services. However, Respondent did not select these links which are auto-generated by Yahoo! In addition, only four links out of totally 23 links appeared in such a way.
The Domain Name consists of two common, correctly spelled English words, i.e. “charter” and “business”. Complainant's “Charter Business” mark is neither arbitrary nor highly distinctive.
Several Policy decisions have concluded that the use of descriptive domain names for paid advertising links or directory pages can be a legitimate commercial activity. See e.g., Sweeps Vaccum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 (legitimate use of the domain name to describe “the types of businesses . . . listed on the directory page”); KIS v. Anything.com Ltd., WIPO Case No. D2000-0770 (evidence suggests that the name was chosen because of its intrinsic value, not because it corresponds to a trademark; Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241 (“the use of a generic domain name to provide information about the genus satisfies the requirements of paragraph 4(c)(i) of the Policy”).
Unless there is persuasive evidence that the Domain Name was selected opportunistically to create confusion and exploit Complainant's mark, the Panel would conclude that Respondent has a legitimate interest in using the Domain Name, comprised as it is of descriptive English words, for advertising or other commercial purposes. Thus, the determination of legitimacy in this case is intertwined with the question of bad faith, which is better addressed below in connection with the third element of the Policy.
The Complaint must establish that “the Domain Name has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). The Complainant implicitly relies on paragraph 4(b)(iv) of the Policy, which describes one example of bad-faith registration and use:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Complainant infers, without any direct evidence, that Respondent both registered and used the Domain Name to create a likelihood of confusion among Internet users familiar with Complainant's marks and thereby divert them to Respondent's website for commercial gain.
Respondent categorically denies such intent.
The Panel believes that Respondent's assertion that it did not register the Disputed Domain with Complainant's mark in mind and that it had no knowledge of Complainant's alleged trademark when it registered the Disputed Domain, is plausible.
This assertion is regarded by the Panel as plausible, because (a) the Domain Name consists of two common English words and (b) the Respondent registered the Domain Name on March 3, 2003, i.e. about one year before the date for which Complainant claims first use and first use in commerce of the “Charter Business” mark (April 1, 2004 according to the USPTO website).
Complainant submits that Respondent should have been aware of Complainant's various trademarks when Respondent registered its Domain Name on March 3, 2003. Complainant hereby refers to various trademarks containing in any case the term “Charter” and in seven cases the term “Business”. The seven “Business”-marks were all registered between 2007 and 2009 and can hence be no basis for a finding of bad faith registration against Respondent who registered the domain name in 2003. The only four trademarks who pre-existed the registration of the domain name are: CHARTER CABLE TV (19 June 2001), CHARTER COMMUNICATIONS (November 16, 1997 and November 20, 2001) and “CHARTER DIGITAL CABLE” (June 19, 2001). They only contain the generic term “charter” which is (like “business”) a common English word. The Panel therefore fails to see how Respondent could establish, based on these CHARTER-marks, that Respondent knowingly targeted Complainant's trademark when registering the Domain Name <charterbusiness.com>.
In its Supplemental Brief, Complainant also refers to a further trademark, i.e. “Charter Business Networks”, No. 2,643,748 issued on October 29, 2002 which it surprisingly omitted to mention in its Complaint. As a side remark, the Panel notes that this trademark was not listed either in Complainant's cease and desist letter to Respondent dated November 12, 2009.
The Panel is of the opinion that this trademark has no influence on its finding. This is partly because, said trademark has meanwhile been voluntarily cancelled by Complainant, so that it would in the Panel's view be legally inappropriate to construe a bad faith argument on such a trademark. Moreover, even if it had not been cancelled, the Panel does not see how the term “Charter Business Networks” would necessarily have inspired Respondent in registering the term “Charter Business” as it is clearly not the same expression. In addition, as one can see from Exhibit S 1-b, the logo “Charter Business Networks” contains a small “Charter” and a big “Business Networks” which shows that the main term in this trademark & design was rather “Business Networks” preceded by “Charter” but not “Charter Business” followed by “Networks”.
Consequently, absent evidence that Complainant owned, or would shortly own, a “Charter Business” trademark in 2003, and that Respondent was more likely than not aware of that fact, the Panel finds it inappropriate to conclude that the Domain Name was registered in bad faith. See Diknah, S.L. v. WebQuest.com Inc., WIPO Case No. D2005-0573, and Builder's Best, Inc. v. Yoshiki Okad, WIPO Case No. D2004-0748 (in order to find bad faith, “there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant's mark”).
As to the few references to Complainant's competitors on Respondent's website, the Panel is satisfied with Respondent's explanations and is of the opinion that they seem purely incidental in terms of relevance (4 links out of 23) and duration (appearance in November 2009). No evidently bad faith strategy is recognizable behind this and Respondent has reacted quickly upon Complainant's notice by removing them from its web site. In any event, if Respondent in the future used the Domain Name at issue to resolve to a web site which targeted Complainant's trademarketed services, then Complainant would presumably be entitled to bring another UDRP proceeding on that basis.
With regard to the “laches discussion”, Respondent acknowledges that the doctrine of laches:
“is not generally recognized under the Policy” but argues that “Complainant did not initiate these proceedings until more than seven years following Respondent's registration of the Domain Name” and that “such a long delay in taking action, nevertheless, questions how confident Complainant has been regarding the success of a domain name challenge […]. The delay also raises the inference that Complainant did not genuinely believe the disputed Domain Name was registered in bad faith.”
The parties are both located in the United States, where courts recognize the doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. The remedies under the Policy are injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of communications, goods, or services. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy's purposes). The Panel therefore shares the view expressed in Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560, i.e. that the equitable defense of laches does not properly apply to this Policy proceeding.
Although the Panel finds it surprising that Complainant did not initiate these proceedings until more than seven years following Respondent's registration of the Domain Name, the Panel refrains from unnecessarily speculating as to the reasons why the Complainant failed to bring a UDRP Complaint earlier.
On the same token, the Panel also refrains from speculating why Respondent was using a who-is privacy service. Complainant submits that a party engages in bad faith when it utilizes a who-is privacy service solely for the purpose of masking its true identity. There is no evidence that Respondent used that service for that purpose, all the less as it identified itself in the course of the proceeding as “CK Ventures”. It has also to be recalled that the use of a privacy service does not necessarily imply bad faith as there can be many legitimate reasons to use privacy services such as prevention of identity theft, protection against spam or other legitimate account management issues. See Divex Limited v. ZJ, Sam Chang and Tim NG, WIPO Case No. D2007-0861. In any event, this is not a case which would allow a panel to find for bad faith solely on the basis of this (unproven) argument.
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey
The Hon Neil Brown QC
Dated: June 25, 2010
This Panel agrees with the finding of the majority that it surprising that Complainant did not initiate these proceedings until more than seven years following Respondent's registration of the Domain Name. However, this Panel does not agree, with respect, that the conclusion should therefore be that the Panel should refrain from speculating on the reasons why Complainant failed to file the Complaint earlier. Rather, the conclusion should be to accept Respondent's submission that the delay raises the inference that the Complainant did not truly believe Respondent had engaged in bad faith registration, an inference which has not been rebutted by Complainant. That is so for the following reason.
Respondent raised the issue in its Response and cited in support of its submission the decisions in Rolling Stone LLC v. Robbins Carnegie Inc., No. 318048 ( NAF Oct. 14, 2004)(delay could indicate that complainant “did not seriously believe” that Respondent had violated the Policy and Bosco Prod., Inc. v. Bosco email Servs., No. 94828 (NAF June 29, 2000).
From that point on, there was no doubt that the delay and its consequences were in issue. Complainant asked for and was granted leave to put in a supplementary submission that was directed by the Panel to be “restricted to any new element which is not already covered by its previous submission(s)”.
Despite that opportunity, in its supplementary submission Complainant did not give any explanation for the delay or make any submission on the effect or significance of the delay or the conclusions that the Panel should draw from it.
Respondent is correct in submitting that the delay raises an inference that the Complainant did not truly believe Respondent had engaged in bad faith registration and, as Complainant has not put anything by way of evidence or submission to rebut it, the inference should be confirmed. That in turn tends to confirm the conc- lusion that the domain name was not registered in bad faith.
On the wider question of whether laches is a defence, the majority adopted the view expressed in Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 and other decisions that the equitable defense of laches does not properly apply to UDRP proceedings and that, of course, is the prevailing view. However, without going into it in detail here, it may be time for a closer examination of that issue and whether it is appropriate to exclude it as a defence in cases where the complainant has waited years before filing a complaint. This panelist was part of a majority in Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139 that felt that there is scope for looking again at the assumption that laches has no part to play in UDRP proceedings, a decision that has been the subject of at least one commentary at “www.cyberlawonline.com” and which may stimulate some debate.
As part of the discussion on bad faith, the decision contains the sentence: “In any event, if Respondent in the future used the Domain Name at issue to resolve to a web site which targeted Complainant's trademarketed services, then Complainant was entitled to bring another UDRP proceeding.”
This Panel does not agree, with respect, that this sentence should be part of the decision, for two reasons. First, the Panel has no power under the Policy to give directions on future conduct and its powers are limited to ordering transfer, cancellation or denying the relief sought. Secondly, the statement concerned is open to the interpretation that such targeting, after registration, would mean that the domain name had been registered and used in bad faith. In my opinion, whether a domain name has been registered and used in bad faith will depend on the facts, but the facts must show, in the words of the Policy, both that the domain name was registered in bad faith and that it has been used in bad faith. Such determinations on matters of fact can only be made when the facts are known.
The Hon Neil Brown QC
Dated: June 25, 2010