Paris, September 4, 2018 – On June 20th, the WIPO Arbitration and Mediation Center issued a decision in a UDRP proceeding initiated by REGIMBEAU against a 21-year-old domain name. The sole dispute resolution expert recognized the infringement of prior rights – in this case of trademarks and a domain name – and ruled in favor of the transfer of the disputed domain name to the complainant.
In this case, the domain name had been registered 21 years prior to the filing of the complaint, without having previously been detected by the complainant, the prior rights holder. Because of the length of this delay, one could rightly question the chances of success of such a complaint.
Indeed, while late filing is not prohibited and does not prevent the prior right holder from having his arguments be heard, it has, however, been recognized in many decisions that such a delay makes it more difficult to demonstrate the bad faith and/or lack of legitimate interest of the buyer of the disputed domain name.
In this case, the buyer did not respond to the complainant’s arguments and therefore did not attempt to challenge the legitimacy of the complaint in view of its late filing. In addition, the buyer had already been involved in previous UDRP proceedings and for similar cases of typo squatting. Thus, the lack of legitimate interest of the buyer and his bad faith could be demonstrated by means of a detailed argumentation.
It is interesting to note that the dispute resolution expert did not mention the late nature of the complaint in his decision. This therefore shows that this contextual element is not systematically considered in the assessment of a dispute if it is not relied on by the adverse party and in particular if the bad faith of the buyer can furthermore be clearly established.
Thus, no equivalent to the so-called “laches” American doctrine, wherein late claiming one’s rights may be detrimental and automatically result in the dismissal of the out-of-court complaint, exists in the UDRP procedure.
Therefore, although a domain name may be registered for many years, the chances of success of a UDRP procedure are not necessarily undermined, subject, of course, to the solidity of the argumentation and the benefit of favorable contextual elements.
In any case, it is very important to implement effective surveillance of the domain names likely to infringe your rights in order to detect them as quickly as possible. You have to strike while the iron is hot!
