Opera National de Paris of Paris, France, just gained control of ParisOpera.com and OperaParis against Vertical Axis Inc. which was represented byESQwire.com, P.C.
It was a majority decision with panelist Neil Brown filing a dissenting opinion longer than the actual opinion of the panel in which he found that the complaintant failed to meet any of the three required conditions for a UDRP.
The domains were awarded based off a trademark which is OPERA NATIONAL DE PARIS, which in the dissent found was not being infringed on by ParisOpera.com or OperaParis.com. Mr. Brown also pointed out that the Opera company has changed it name 22 times over the years.
Here are the relevant facts and findings by the majority of the three panelists:
“The Complainant is Opera National de Paris, a French Public Utility Company managing the Opéra Garnier and the Opéra Bastille in Paris, France. The Complainant inter alia owns the following registered trademarks:
- OPERA DE PARIS, French word trademark, filed under the number 04 3 329 411 on December 13, 2004;
- OPERA NATIONAL DE PARIS, French device trademark, filed under the number 94 538 657 on October 4, 1994;
- OPERA NATIONAL DE PARIS, device trademark, international registration, filed under the number 814 215 on August 19, 2003, designating Switzerland, Liechtenstein, Monaco and the Russian Federation;
- OPERA NATIONAL DE PARIS, device trademark, community trademark registration number 003320041, filed on August 20, 2003.
The Disputed Domain Name operaparis.com was registered on June 10, 2006 and the Disputed Domain Name parisopera.com was registered on May 19, 2004.
The Respondent in the present case argues that the Complainant’s claim should be barred due to the application of the doctrine of laches.
It is correct, that the panel in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. 1349045 cited by the Respondent stated that “[t]he Panel believes that the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant. Prior decisions rejecting the applicability of the doctrine due to the failure of its express recognition in the UDRP Policies appear to be an unsound basis for ignoring the potential defense.”
“However, the most recent UDRP decision on this issue convincingly holds otherwise. In Alimak Hek, Inc. v. Richard Wheat, WIPO Case No. D2011-1344, the panel after a careful evaluation of the issue refused to apply the doctrine of laches to a delay of more than ten years.…
