The doctrine of laches is based on the maxim that “equity aids the vigilant and not those who slumber on their rights.” (Black’s Law Dictionary). The outcome is that a legal right or claim will not be enforced or allowed if a long delay in asserting the right or claim has prejudiced the adverse party.
The same principles have been upheld in the WIPO matters such as TV Sundram Iyengar and Sons Limited [WIPO Case No D2014-0814] by Three Member Panel, which included Mrs Harini Narayanaswamy from India, wherein it was held – “The Respondent registered the Domain Name in June 1997. The Complaint was filed over 17 years later, a substantial delay by any measure. The Complainant does not explain why it waited so long to initiate the Complaint. This long delay bars the Complaint under the doctrine of laches, which has been recognized under the Policy. Even if the Panel does not deny the Complaint on the basis of laches, the long delay also raises an inference that the Complainant did not truly believe the Respondent engaged in bad faith registration.” Similarly, a delay of 15 years after Domain Registration was upheld in the NAF matter of Laminex, Inc. v. Yan Smith [Claim Number: FA1211001470990]
Now coming to the INDRP matter BNP Paribas V Nathan Muran [INDRP/248; Decided on 31 October 2011], wherein both the Complainant and the Respondent belonged to France. The Complainant had already issued a letter to the Respondent for cancellation of the disputed domain name: www.bnpparibas.in. But in Respondent Respondent’s lawyer demanded EUROS 20,000 for the transfer of disputed domain name. The Complainant argues that the Respondent has no legitimate interest in the domain name and likely to cause confusion as to the Complainant’s mark.
While Respondent’s response is worth it and can be quoted in future INDRPs in defense. Initially, n order to prove legitimate interests, he stated that he is of Indian Origin and intend to develop a Matrimonial Service website based upon names from an Indian Fairy Tale, where “BNP Pari Bas” stands for Bubly & Papu Pari Bas. he provided evidence in the form of screenshots in support of this contention.
Further, he puts more stress on the doctrine of laches and the failure of the Complainant to get hold of the Domain Name firstly during the sunrise period before general availability of the .IN Domain Names. He further states that he never heads from the Complainant between July 2005 and October 2010, while he spent a huge amount in 2005 itself on the development of the website, for which he produced an invoice for approx 15,000 Euros. Further, also argues that the action should have been brought between the limitation period of 3 years (which is provided for filing for infringement of Trademark under Indian Limitation Act 1963) but the failure of the Complainant to bring the suit within the said timeline of 3 years otherwise the action is time barred under the equitable doctrine of delay and latches. It was also argued that the Trademark has been filed by the Complainant but has not been registered yet, while the Respondent interest is under a different Trademark class.
Respondent also quoted matter of Cable News Network Lp, Lllp (Cnn) vs Cam News Network Limited on 7 January 2008, where Respondent had argued…. the unexplained delay on the part of the plaintiff in instituting the action for infringement and passing off disentitles the plaintiff to interim relief. It is further argued that acquiescence is also attributable to the plaintiff who has allowed the defendant expand its publication business. The Respondent lastly provided that he is ready to accept EUROS 20,000 in settlement of his amount spent on the website development.
The Arbitrator Mrs Harini Narayanaswamy held that the use by Respondent similar to the Trademark of the Complainant and the arguments in support do not justify as it was already a Trademark in use at the time of Registration of the domain name by the Respondent. Further, Respondent is not making any legitimate non-commercial use of the same. As a result, such use of the disputed domain name is likely to mislead public and the internet users that disputed domain name may refer to the Complainant and its business. The argument of the Respondent as to Sunrise period has been upheld against him, indicating the assumption of knowledge on behalf of the Respondent and admission by the Respondent of the fame of the Trademark. Further, the geographical location of the Respondent which is also France does not help the Respondent’s case. It is unlikely that the Respondent did not know of the Complainant’s prior rights in the mark when he registered the disputed domain name. The very choice of the domain name is not a mere coincidence. but is likely to be a deliberate use of a well-recognized mark to attract unsuspecting users to the Respondent’s site. The further demand for Euros 20,000 was upheld as an attempt to sell the domain name in excess of out of pocket expenses.
The Respondent argued that the Complainant has delayed in filing the present complaint and the delay in bringing in this action ought to be a ground for dismissing the Complainant While Arbitrator held that the remedy under the INDRP Policy is an injunctive in nature rather than compensatory in nature and the basic principle of the policy is to prevent future confusion to the source of goods and services and delay and latches are generally not a defence in such proceedings. [Refer: WIPO Case No D2011-0637 and Cable News Network Lp, Lllp (Cnn) vs Cam News Network Limited]
The Arbitrator Mrs Harini Narayanaswamy ordered for the Transfer of the Domain Name but subject to payment of costs of Euros 1500 by the Complainant to the Respondent for the delay in taking the present action.
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