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Laches - An Equitable Defense Against Stale or Belated UDRP Domain Grabs

Detailed and Well Reasoned Article on the Equitable Doctrine of Losing Rights by Delaying Action

6:23 pm on Jan 16, 2018 (gmt 0)

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It's 2018. You registered a domain in 1999 or 2001. Now, someone or some company steps forward to argue that you've hoisted their trademark or your domain, in some manner, impairs their TM.

What do you do?

Among your defenses to the late coming domain grab effort you raise, at the UDRP - or, in a court of law or equity - the "affirmative defense" of laches.

What is laches? How does it work?

Really well presented article on laches and domain grabs at CircleID.com [circleid.com ]

After 18 years of the UDRP, it is time to re-examine the defense of laches. When the UDRP was launched in 1999, the defense of "laches" was likely not foremost on anyone's mind. After all, "laches" refers to a lack of diligence in making a legal claim and since the UDRP was brand new and the commercial use of domain names was in its relative infancy in 1999 [1], nobody was really concerned with a trademark owner having "unreasonably delayed" making a UDRP complaint. Nevertheless, the defense of laches has been regularly raised by respondents as a defense in UDRP proceedings from the very beginning, though it has been rejected by many panelists who have claimed that it is "not available" under the UDRP. Those panelists who have rejected laches as a defense have claimed that it is 'impractical to require a trademark owner to instantly enforce trademarks against cybersquatters' and that since laches is an "equitable remedy," is not applicable to the UDRP because 'the UDRP is intended to provide injunctive relief to prevent abuse' [2].

Nevertheless, after 18 years of the UDRP, laches is a defense which should be considered anew, particularly in light of the breadth of delays in bringing a UDRP complaint which could not have been a significant factor back in 1999. As the UDRP matures, it is conceivable and even likely that UDRP complaints will be in the future be brought 20, 30, and even 40 years after a domain name's registration, and such delays could very well cause prejudice to the registrant in particular circumstances, such that the registrant by all rights should be able to rely on the defense of laches.

Far more to read, digest and boomark for reference if you're the holder of domain names dating back now almost twq decades.

Short version: If you sit on your (asserted) rights for 2 decades the rights get a bit less right, if not downright decrepit, smelly and unenforceable. That's the gist of "equity". It may not be black letter law (statutes) but that doesn't mean it doesn't make sense - as applied in context.