No Time Bar, No Laches under the UDRP

CircleID CircleID: Two Uniform Domain-Name Dispute-Resolution Policy (UDRP) decisions posted this month involved domain names registered 20 and 21 years ago, David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA1706001734414 (Forum July 4, 2017) (<>, 21 years) and Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, LLC / Ravindra Patel, gbe, D2017-0807 (WIPO July 6, 2017) (<>) (20 years). Complainants prevailed in both cases. The domain names stand out as being the oldest to have been found registered in bad faith, and transferred. Readers unfamiliar with the UDRP may be surprised to learn there is no time bar for making a cybersquatting claim, and laches is not a defense.

While David Duchovny and Commonwealth Bank are similar in filing complaints for long-held domain names, Complainants' circumstances are strikingly dissimilar (celebrity name versus a name composed of two dictionary words and parties located on different continents). While the first decision is understandable and the second is questionable.

The "no time bar/no laches" limitation which is one of the core principles of the UDRP is consistent with WIPO's recommendations for the proposed administrative procedure that became the UDRP. The WIPO Final Report (1999), Paragraph 197 stated that "a time bar to the bringing of claims in respect of domain names (for example, a bar on claims where the domain name registration has been unchallenged for a designated period of years) should not be introduced." Then, in Paragraph 199, "time bar" is expressly rejected: "It is not recommended that claims under the administrative procedure be subject to a time limitation.” (Italics in original).

While the recommendation did not achieve written recognition in the Policy Panels quickly enshrined it in their decisions: "[there is] no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions.", Inc. v. Ult. Search Inc., D2001-1319 (WIPO February 1, 2002). The Panels in David Duchovny and Commonwealth Bank make the same point: "This Panel lacks equitable powers; therefore, even a delay of 21 years does not implicate laches" and "Panels have . . . declined to specifically adopt concepts such as laches or its equivalent in UDRP cases."

Whatever advantage complainants may appear to gain by the rejection of any time limitation or laches is offset in two ways: by respondents' rebuttal evidence (which if there is any, would have to be countered) and by the evidentiary demands on complainant for proving bad faith. The specific antidote to complainants sleeping on their rights is expressly set forth in Paragraph 4(c)(i) of the Policy; that is, if in the long interval before complainant wakes up a respondent accrues rights in the domain name, the complaint must be denied.

It will be noticed that the 4(c)(i) defense incorporates a key element of laches, namely detrimental reliance, so that while laches is ostensibly rejected it is present through the back door. Paragraph 4(a)(iii) also plays a role because the passage of time is a black hole; all evidence is lost if not maintained, so that even if respondent is found to lack rights or legitimate interests, if complainant cannot marshal evidence of bad faith registration the domain name must remain with respondent.

Proving cybersquatting of marks predating domain name registration is easier the closer in time between the registration and filing the complaint. It becomes increasingly difficult the longer complainant waits, particularly for weak marks (as opposed to celebrities' strong marks ). When complainants lose, the inapplicability of laches is no help to them and should be no hindrance to respondents; the evidentiary problem lies in complainant's inability to marshal the necessary evidence.

The database of complainants losing for lack of evidence is full of these disputes. The Sinclair Group Nevada, LLC v. behnam tabrizi, FA1606001679802 (Forum August 3, 2016) (<>, 7 years. Complaint dismissed). The reverse is also true. Unlawful registrations will be cancelled or transferred regardless the length respondents have held them. Coles Pen Company Limited v. Cole, Samantha / Coles of London, FA1702001717458 (Forum March 30, 2017) (<pen>. 8 years). Complainants prevail when the evidence dictates that result, and fail if it doesn't. Hôpitaux Universitaires de Genève v. Aydin Karadeniz, D2016-1620 (WIPO October 10, 2016) (<>, <>, and <>. Respondent acquired the domain names for a business that never developed. Complaint dismissed).

While there is no time bar, delay has consequences. As Panels were rejecting laches they were developing a nuanced approach that took into account the totality of circumstances. Bosco Prod., Inc. v. Bosco email Servs., FA 94828 (Nat. Arb. Forum June 29, 2000) (<>) for "vanity e-mail" service. The Panel held that "[w]ithout determining if the passage of considerable time would alone bar Complainant from relief in this proceeding, the Panel notes that Complainant does not explain why it has waited nearly four years to try and resolve the domain name dispute"; Novartis AG v. Name Administration Inc. (BVI), FA1403001548210 (Nat. Arb. Forum April 24, 2014) (<>). "It appears to the Panel that any business disruption or confusion suffered by Complainant as a result of Respondent's domain name registration was either non-existent or de minimis, else Complainant would have taken action in a more timely fashion."

Returning to <> and <>, Doug Isenberg examined the David Duchovny decision in an informative essay recently published here in CircleID. Mr. Isenberg properly points out that "the 21-year delay could have undermined Duchovny's case." It didn't because in large part "David Duchovny" (as a mark) has a single source. That is not true of marks composed of generic elements (even though combined they may be distinctive). The Panel certainly ticked off Complainant's evidentiary problems in pointing out there was no evidence of harm: "registration alone of the disputed domain name for 21 years [did not cause] any Internet users to be confused as to the source or origin of any goods or services and there were certainly no lost profits or loss of business or goodwill."

Nevertheless, Mr. Duchovny prevailed on his strong mark because Respondent's position (even had it not defaulted in appearance) was indefensible under any Paragraph 4(c) defenses. (This may not have been true if the domain name had been <> assuming it is a well represented surname). In large measure Respondent lost because celebrities are in a class by themselves when it comes to having their names protected under the UDRP (the Bruce Springsteen decision referred to by Mr. Isenberg was in fact repudiated in Kevin Spacey v. Alberta Hot Rods, FA0205000114437 (Nat. Arb. Forum August 1, 2002) by the presiding panelist in the earlier case.)

Notwithstanding "no lost profits or loss of business or goodwill" the Panel found that the evidence pointed to bad faith registration: "Although no one would claim that the DAVID DUCHOVNY mark, in 1996, was as famous as GOOGLE is today, given the demonstrated notoriety of David Duchovny in 1996 and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant's mark prior to the registration of the disputed domain name." Knowledge (that couldn't plausibly be denied) and celebrity were the key factors.

No one would say that combining two dictionary words makes for a strong mark (exceptions always excluded) or that knowledge could not plausibly be denied. Herein lies the drama in Commonwealth Bank of Australia. Since Respondent held <> passively and failed to explain the circumstances for registering the domain name Complainant succeeded on its prima facie case that Respondent lacked rights or legitimate interests in it, but that doesn't get a complainant to bad faith. Knowledge is an issue for the third, not the second limb of the Policy, and it's complainant's burden to prove.

Bad faith presupposes (requires proof of) respondent registered the domain name with knowledge of complainant and its mark. Since there was no direct evidence of knowledge it had to be found circumstantially, by inference. Separate from the passage of time in Commonwealth Bank is that Complainant is located in Australia and Respondent is an individual located in the United States, in New Jersey. In determining that such evidence as there was after 20 years supported inferences of bad faith, it can be argued that the Panel put his finger on the scale in Complainant's favor.

Drawing inferences, of course, is a valuable tool, but shifting the burden to Respondent to come forward with rebuttal evidence under the third limb is questionable. The principal fact from which the Panel drew its inference was Respondent holding the domain name passively. The Panel's chain of reasoning is as follows:

[T]he entire Response provides absolutely no information whatsoever about the Respondent other than to confirm he is resident in New Jersey. The Panel is not told whether he [Respondent] is in business and if so what that business is, whether or not he deals in domain names, whether this is the only domain name he owns, why and how he decided to register it, or indeed any other of the no doubt numerous factors which would bear on whether or not the Respondent acted in bad faith.

Using this reasoning as leverage the Panel then conjectured that

It would have been an entirely straightforward matter for the Respondent to say (hypothetically), with appropriate evidence 'I had never heard of the Complainant when I registered the Disputed Domain Name' and 'this was part of my strategy of registering names involving the word "bank" combined with a geographic identifier and I also registered (say),, and'

In other words, Respondent is held liable as a cybersquatter for its silence: "Given that the Respondent is represented the Panel is left concluding that this silence on such critical issues is not simply inadvertent but represents a deliberate decision." For a Panel to draw these inferences and then fault respondent (and its counsel) for failing to address factual issues raised only conjecturally is extraordinary. (The Panel in Duchovny also draw inferences but they were anchored to specific facts). The problem is not the logic, the algorithmic steps make perfect sense, but its application. It exceeds a Panel's authority under the UDRP.

This is not to say that in a plenary action, after all the evidence is marshaled and arguments made that Commonwealth Bank would not prevail, but the UDRP as a summary proceeding is not the right venue. Nevertheless, the Panel's finding that respondents must answer to the particular inferences it identified serves a useful purpose as a warning to them and their counsel: where they control the facts relating to their acquisitions of domain names, silence will be held against them. And, equally important, respondents should not rely on a laches defense as though it is dispositive (which Respondent did in Commonwealth Bank). Even though some Panels have embraced the defense, it's not a good defensive strategy.
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLPFollow CircleID on TwitterMore under: Cybersquatting, Domain Names, UDRP

The post No Time Bar, No Laches under the UDRP appeared first on iGoldRush Domain News and Resources.

Continue reading

GoDaddy : From corporate sexism to domain powerhouse

GoDaddy went through a corporate transformation in 2013, and new CEO, Blake Irving, rolled things out with a different process. Gone are the days of blatant sexist ads, with big-breasted female models pitching domains at Super Bowl commercial gawkers. These sleazy times were erased from the action book of GoDaddy, and Blake Irving promoted a […]

Copyright DomainGang

Continue reading

Name Ninja creates price guide to help end user domain buyers

Domain Name Wire Domain Name Wire: Guidelines help startup entrepreneurs understand how much a domain name costs on the aftermarket. Educating end users about the value of domain names is a regular challenge for domain name investors. So it’s helpful to have domain buyer broker Name Ninja issue guidelines that domain owners can refer to. Name Ninja’s pricing guidelines are designed […]
The post Name Ninja creates price guide to help end user domain buyers appeared first on Domain Name Wire | Domain Name News & Views.

The post Name Ninja creates price guide to help end user domain buyers appeared first on iGoldRush Domain News and Resources.

Continue reading

Empowered Community makes first symbolic exercise of power

The new “Empowered Community” of ICANN has exercised its power for the first time. The EC on Friday told ICANN that it has approved the ICANN board of directors’ recent resolution to create a new committee tasked with handling various oversight processes. It’s of largely symbolic importance, the first test of whether the EC process […]
Continue reading

Company Domain Movers:, + More

dotWeekly dotWeekly: Welcome to Domain Movers!
We keep track of corporate domain name transactions and report the early findings to you. Here are the latest:
Shurtech Brands, LLC has acquired from Trnames/ Home Of Domains. The domain was registered on March 6, 2017 which was 4 days after Shurtech had filed a matching trademark on the term. which was registered July 1, 2017 and was owned by Home Of Domains, has transferred into CSC Corporate Domains. The Genpact Cora trademarkRead the rest
Company Domain Movers:, + MoreJamie Zoch

The post Company Domain Movers:, + More appeared first on iGoldRush Domain News and Resources.

Continue reading

CentralNic brings back old CFO

DomainIncite DomainIncite: CentralNic has swapped its currently chief financial officer for his immediate predecessor. Glenn Hayward has left the company after three and a half years “to pursue other opportunities”, the company said in a statement to the markets today. He has been replaced by Don Baladasan, who was CFO of the company between 2010 and 2014. […]

Related posts:CentralNic earmarks IPO money for new gTLDs
CentralNic raises $10 million in IPO
CentralNic reports profitable first half

The post CentralNic brings back old CFO appeared first on iGoldRush Domain News and Resources.

Continue reading

Short .vegas domains go on sale

Dot Vegas has made one and two-character .vegas domain names available to register on a first-come, first-served basis. Single-character domains such as and and two-character names such as and all appear to be available, including domains that match country-code TLDs. Prices seem to be around the $2,750 to $3,299 mark for […]
Continue reading

Domain Shane’s Daily List of Domains at Auction for Monday July 24th

Domain Shane Domain Shane:
Want to know why I was so upset?  Because I knew I was going to have to pay more for names than I felt I should have. So I passed on a lot of purchases I would have liked to make.  Of course I am going to still continue to buy at Namejet.  Anyone that doesn’t is too stubborn for their own good in my opinion. Some are going to quit buying because they feel they are being cheated. Also because they have no idea what a domain is worth at wholesale auction so they really don’t have a clue if they’ve been cheated.
It has been true since the dawn of humans.  A person could be as happy as can be for paying $10 for something.  But tell them that someone else got if for six or that the person that sold it to you got it for a penny and everything becomes different.  Most people have no idea if they got a good deal unless they have others to compare it to.  They don’t possess the ability to be happy with a purchase and continue to be happy with a purchase even after the details show they could have done better.  I too want get the best price I can get and try and do the research to make sure I am getting a good buy.  They only person I get mad at for hearing I could have done better is myself.  Because I didn’t do enough homework.  I generally know what I can sell something for so I try and purchase it at a price that allows me to get my desired returns.  If I get that I try and stay happy and not worry about anyone else. Sometimes that works, some times not.
But then the Namejet “thing” came about.  I am the ONLY one that said publicly prior to all this breaking, that I am not going to buy certain names because I felt a certain account was making me pay more than I wanted to.  That account was driving up the price to a level that I no longer was willing to participate.  Without it I would have.   I looked at my past buys and very very few involved the account HKDN.  On purpose.  It’s also why I will and you should continue buying ALL names at Namejet.  Because you should have the knowledge and expertise to decide on your own whether the current price is a good buy.  If you don’t feel comfortable with a price don’t bid.  Regardless if the bid is real or fake it is still the price that you make decisions on.  Believe it or not, you don’t have to buy the name.
What I said above is exactly what a few people told me when I questioned whether or not there were shill bidders.  They said that if they put prices below reserves then it didn’t hurt anyone because everyone has a choice whether or not to place a bid.  That is a very true statement yet it merely reminds me that I should always bid based on MY predetermined price.  Not past auctions, not other bidders, but what I think I can pay and still sell it for a profit down the road.   I will say it again for the 1,000 time.  Unnatural bidding in any form is wrong legally and ethically.  It doesn’t matter is Bullshit.  Prereserve bidding is just a gateway bid to straight up cheating.  Anyone that allows it should face the consequences.  I can and have worked around it on ALL platforms and still been profitable.  I will continue to work around it.   You can too.  As long as there isn’t straight up cheating.  And I think there was that too.   If anything now is as good of a time as any as there are so many eyeballs on the auctions.  I didn’t even see the HKDN in my list today. Not sure if I just didn’t look at the right names but if that account leaves I might even buy more LLLL.coms.   Here are today’s names. Click for most recent price  
Quote of the Day:  “Everyone is a genius at least once a year. The real geniuses simply have their bright ideas closer together”  -Georg Christoph Lichtenberg
Domain of the Day: Memorable brand and easy logo 

Namejet Domains  Big boy name.  Doesn’t get much better than this in the wedding photo biz    Exotic car dealer.  Has 3 bids at press time  Means dirty or filthy in Spanish   As seen on DomainSherpa.   I still think it sounds like a rapper  People loves these pronounceable 4L.coms   This one as well.   A bit generic but you know what it does.   Met reserve  As a person that is going through it right now I can attest that kids need help going through the application process.  We hired someone to help and its made a huge difference.  And it will easily pay for itself through better admissions and scholarships   Paddleboards have become the number one rental for watersport places  3 bidders.  Sounds like a startup
Sedo Names at Auction  Brain related words has been doing well in dot ai  Close to making reserve.  International  I like this one as well
SJ.DE   Americans don’t know much about .de but I think its one of the more valuable country codes.  Two letters only go up in value IMO   Invest in wine
 Godaddy Domains That I Like With Multiple Bids     All the money is in the kitchen and the bathroom   Hard to spell but it is 21 years old so it will get some action   There is still money in  I think the best numbers continue to hold and increase in value. My opinion only.  Damn, what price.   Patterns still rule    Matrix is a popular naming word    I’m not going to lie.  I had to look this one up.  Had no idea it had to do with teeth.  I just saw all the bids and figured I was missing something   I’ve been told I can’t use the term fly anymore.  Moved to fleek   Nice little 5L with a few bids.  And has GO in it   In the orient its probably a beautiful name. To me it sounds like a strip club    Presented by iHeart radio   I imagine this will be used to track items vs getting SMS alerts for track and field events   15 years old.    Could be used for anything but sounds like a fun ZipLine   Already being used by a water purifier.   But there are a lot of things people are looking for to be pure   15 years old and 25,000 backlinks  The internet is full of make a t-shirt sites.  This is one of the better names  ” Lock up a great seat ”
Domains That I Like With One or No Bids The age is the draw and LLindustry generally has been good sellers in XXX range Every town seems to have a church named this. But I don’t think the church market is a big one. At $12 you may be able to trade the name for eternal salvation The keto diet is growing in popularity. I would be on it but it just doesn’t work with my physical work lifestyle Bitcoin mining comes to mind here. Nobody else’s I can see this on the back of a truck that is hiring drivers or looking for loads Medical clothing has moved from stores to online. I know, we have a lot of hospitals and used to have three stores dedicated to cute scrubs and comfortable shoes. All closed because of online. Still a big business My neighbor is a mead drinker. He is also a blacksmith so he fits the part. Mead is starting to show up in some bars Upgrade name for a few entities Youth is all about look at me so this name will work well The old campaign in case you got caught on fire. Not sure why it was such a big deal back in the 80s. Didn’t realize so many kids caught on fire Upgrade name for some companies of the same name Another nice brand with no bids Every designer thinks she is Perfect brand for a dot org no bidders Sounds like a 300 year old English brand “Take your fashion to the next level”
Other Domains With Bids
Have a name at auction and need more exposure? Send me an email. I Charge $10 per name per day. We may be able to help. If you have an auction you want to promote, email us for details.*All names chosen by me, Shane . (ie you click through and purchase a name you like) or an occasional paid listing. Everything I say is based on my own research or is opinion. Do your own due diligence. That means look it up yourself if you don’t think the stats or my opinion is correct. I hand choose my names but I am paid to make this list by the auction houses, individuals that are auctioning names, and Godaddy affiliate links. Keep that in mind and only buy names that YOU think are good

The post Domain Shane’s Daily List of Domains at Auction for Monday July 24th appeared first on DSAD.

The post Domain Shane’s Daily List of Domains at Auction for Monday July 24th appeared first on iGoldRush Domain News and Resources.

Continue reading