Laminex, Inc. v. Yan Smith
Claim Number: FA1211001470990
Complainant is Laminex, Inc. (“Complainant”), South Carolina, USA. Respondent is Yan Smith (“Respondent”), represented by Brett E. Lewis of Lewis & Lin LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theidshop.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Hon. Neil Anthony Brown QC, Hon. Bruce Meyerson (Ret.) and John Upchurch as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2012; the National Arbitration Forum received payment on November 14, 2012.
On November 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <theidshop.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on November 19, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On December 10, 2012, Respondent requested additional time to submit a Response to the Complaint, without Complainant’s consent. The Request was approved on December 10, 2012, extending the deadline to Respondent to December 20, 2012.
A timely Response was received and determined to be complete on December 20, 2012.
On January 3, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Neil Anthony Brown QC, the Hon. Bruce Meyerson (Ret.) and John Upchurch as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant provides photography services as well as the sale and production of equipment, supplies and services necessary to create legitimate identification devices such as ID cards, name badges, and electronic access control cards under the ID SHOP mark.
2. Complainant owns a trademark registration for the ID SHOP mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,562,775 registered October 24, 1989).
3. The <theidshop.com> domain name is confusingly similar to Complainant’s ID SHOP mark.
4. Respondent is not commonly known by the <theidshop.com> domain name.
5. Respondent uses the disputed domain to engage in “illegitimate and illegal practices that run counter to the legitimate business practices of Complainant,” including what appears to be the creation of “fake id cards” which are made available to the general public.
6. Respondent’s registration and use of the contested domain name for the purpose of operating a competing business disrupts the legitimate business of Complainant.
7. Respondent “has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s ID SHOP mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.”
1. Respondent registered the <theidshop.com> domain name on April 29, 1998.
2. Respondent has owned and operated a novelty ID shop, housed at the <theidshop.com> domain, since June 1998.
3. Respondent formed the Texas limited liability company, “The ID Shop, LLC,” in December 2003.
4. Respondent’s novelty ID business has generated over $2,000,000 in sales and has served tens of thousands of customers while employing dozens of employees and expending over $100,000 for promotional purposes.
5. Respondent’s business is not in competition with Complainant’s business, because Respondent merely produces novelty IDs while Complainant produces actual identification badges for formal purposes.
6. While Respondent did originally sell “novelty state ID cards,” it has sold only “novelty ID products” since 2001.
7. Complainant’s claims should be barred on the basis of laches.
The Complaint is barred by the doctrine of laches.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Respondent has raised the issue of laches as a defense to the Complaint. Because the Panel agrees, the Panel finds it unnecessary to consider the three elements of the Policy.
The relationship of laches to UDRP proceedings was discussed at length in craigslist, Inc. v. Craig Solomon Online Servs., FA 1367598 (Nat. Arb. Forum Mar. 1, 2011). In that case the complaining party offered no explanation for a nine-year delay in initiating the complaint. The panel wrote:
“Laches is an equitable defense that has been held to apply in actions to enforce trademark rights. Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 601 (8th Cir.1999). Laches applies when a claimant inexcusably delays in asserting its claim and thereby unduly prejudices the party against whom the claim ultimately is asserted. Ray Communications, Inc. v. Clear Channel Communications, Inc., 673 F.3d 294, 300 (4th Cir. 2012). To successfully defend on the basis of laches a defendant must demonstrate the presence of three elements: (1) a delay in asserting a right or a claim; (2) that the delay was not excusable; and (3) that there was undue prejudice to the party against whom the claim is asserted.” Kason Indus., Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1203 (11th Cir.1997).
The Panel concurs with the decision in The New York Times Co. v. Name Admin. Inc. (BVI), FA 1349045 (Nat. Arb. Forum Nov. 17, 2010) where the panel ruled that that laches is "a valid defense in any domain dispute where the facts so warrant." Although laches has not always been viewed as a defense in a UDRP proceeding, it is now recognized that laches may be found in the appropriate case:
“Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.10 (2d ed.) The recognition of laches as a defense in UDRP proceedings was discussed fully in Professional Rodeo Cowboys Ass’n, Inc. v. Alternative Advertising Concepts, Inc. / Kenneth Forman, FA 1440736 (Nat. Arb. Forum June 26, 2012). The panel found that because the complainant waited six years to file a complaint after the domain name in dispute was registered, the complaining party failed to establish that the respondent lacked rights or legitimate interests in the domain name. The panel explained why laches may be considered as follows:
While the doctrine is not expressly recognized as a defense in UDRP proceedings the principle has long been applied in many cases even when the language has not. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
The arguments against the application of laches in UDRP proceedings has (sic) frequently been based on formality more than reality as it is oft repeated that equitable relief is not part of an administrative proceeding. However the reality is that the UDRP only offers what amounts to equitable relief and there has been a growing recognition and willingness to expressly consider laches as an equitable defense in a proceeding where equitable relief is the only possible remedy. Furthermore laches is a well-recognized defense in trademark law in the United States where both parties reside. In N.Y. Times Co. v. Name Admin. Inc. (BVI), (Nat. Arb. Forum Nov. 17, 2010), the panel expressly recognized laches as a valid defense where the Complainant was a sophisticated entity that had been in business for a substantial period of time and had registered several trademarks and domain names, and the Complainant stood by without explanation and watched the Respondent actively build a business using the disputed domains that allegedly included its protected marks for more than six years.
E.g., Tony Novak v. Marchex Sales, Inc / Brendhan Hight, FA 1418478 (Nat. Arb. Forum Mar. 1, 2012) (while not finding laches nine year delay in bringing complaint held not to establish bad faith).”
Here, the record reflects the following. Respondent registered the domain name in 1998 and has consistently done business selling novelty IDs since then, and under the name THE ID SHOP since 2003. Respondent has invested substantial sums promoting its business and advertising that business on the Internet through the <theidshop.com> domain name.
The Complainant holds a trademark with the USPTO for the ID SHOP mark and has used that mark since 1989. The focus of Complainant’s business is in the security industry where it works with hospitals, schools, manufacturing operations and other organizations which require valid photo identification cards.
Despite having the opportunity to do so, Complainant has offered no explanation for the 14-year delay in bringing this Complaint. In light of the unexplained delay in bringing this proceeding, and the demonstrable harm to Respondent should the domain name be transferred, the Panel concludes that under the doctrine of laches, relief should be denied.
Because the Complaint is barred by the doctrine of laches, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <theidshop.com> domain name REMAIN WITH Respondent.
Hon. Neil Anthony Brown QC, Hon. Bruce Meyerson (Ret.)
and John Upchurch, Panelists
Dated: January 7, 2013
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