A court in the Southern District of Florida recently barred a trademark owner, who sought possession of a domain that allegedly infringed on his mark, from asserting claims under then Lanham Act and the Anti-Cybersquating Consumer Protection Act (ACPA) due to the Doctrine of Laches, thus dismissing the case in favor of the defendant.
The doctrine of laches is considered in the legal realm to be an “equitable defense” that rewards those who diligently assert their claim and penalizes those who procrastinate when avowing their rights. Under this doctrine if party delays in stating their claim and as a result that delay unfairly prejudices the opposing party then the opposing party may assert the defense of laches. Generally, for a party to be unfairly prejudiced it must be shown that as a result of the delay the opposing party is in a worse position now then at the time the claim should have been brought.In the case at hand the defendant acquired assets including the domain diamondbrite.com and trademark rights in the mark “Diamond Brite” as it apples to electronic signs. In 2002 the plaintiff, owner of the “Diamond Brite” trademark with respect to cleaning products, sent an email to the defendant seeking to procure the domain. No action was taken upon this request. In 2005, the plaintiff sent a cease and desist letter to the defendant and demanded immediate possession of the domain. The defendant refused the transfer but asked for more information regarding the plaintiffs’ trademark. The defendant did not hear from the plaintiff again until 2007 when they received a second cease and desist letter to transfer the domain which the defendant again refused. After the second refusal the plaintiff sued the defendant for trademark infringement under the Lanham Act and the ACPA.
In response to the lawsuit the defendant filed a motion to dismiss the case based on the defense of laches. The court asserted the defendant needed to prove three elements to be successful on a laches defense. These elements are (1) a delay in asserting a right or claim; (2) that the delay was not excusable; and (3) that there was undue prejudice to the party against whom the claim was asserted. In applying the elements to the case at hand the court determined that the plaintiff’s actions, which consisted of merely sending an email and letters over the course of five years, constituted a delay. Second, the court believed that there was no excuse for the delay. And third, the court determined that the said delay would unfairly prejudice the defendant as it would require them to amass eight years worth of evidence which the court found to be burdensome. Based on this analysis the court granted the defendant’s motion and dismissed the case under the doctrine of laches.
Source: By Liz Oliveira, Legal Team Sedo.com -- Reprinted with permission -- October 14, 2008