In this domain name dispute video, I discuss a decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) in which Toyota won rights to the domain name <toyotta.com> (with two letter t's in the middle) — 18 years after it was registered.
The decision addresses the issue that occasionally arises in domain name disputes when a trademark owner files a complaint after a lengthy delay: Whether the legal doctrine of “laches” bars relief because so much time has passed between registration of the domain name and legal action.
Here’s what the panel wrote in the Toyota case:
The Panel notes that the disputed domain name was created almost twenty years ago. A question has arisen in some UDRP proceedings as to whether lengthy delay in bringing administrative proceedings may somehow disentitle a complainant. It is now generally agreed that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Those cases where a complaint may have failed due to delay have been limited to their own particular circumstances which find no parallel in this undefended case.
As I explain in the video, this outcome is consistent with the WIPO Overview, which says that “trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of.”
Fortunately for Toyota, other than the issue of laches, this UDRP decision was straightforward, because the domain name was obviously confusingly similar to the TOYOTA trademark despite the additional letter and the registrant of the domain name offered it for sale for $99,999!
Still, even though this was an easy victory for Toyota because its delay didn’t have any impact on the outcome of the case, it’s impossible to know how much damage Toyota incurred in the meantime — which is a good reminder that taking on cybersquatters sooner rather than later is usually the best approach.
