Actor David Duchovny wins his domain name davidduchovny.comWhile plenty of UDRP decisions have made clear that a trademark owner's delay in bringing an action against a cybersquatter (often referred to as "laches") is typically not a defense, actor David Duchovny's decision to file a UDRP complaint nearly 21 years after the domain name <davidduchovny.com> was registered may set a record for the longest wait in a domain name dispute.

Duchovny is perhaps best known for his role as FBI Special Agent Fox Mulder in the science fiction TV series The X-Files, which ran from 1993 to 2002. The series was revived in 2016 and, recently, renewed for the 2017-18 TV season.

The domain name <davidduchovny.com> was created when Duchovny was popular on TV in 1996, in the early days of cybersquatting and before the UDRP was even created. (The first UDRP decision was not issued until January 14, 2000.)

Jeff Burgar, Bruce Springsteen and Other Celebs

The original registrant of the <davidduchovny.com> domain name, "Alberta Hot Rods c/o Jeff Burgar" ("Burgar"), is no stranger to domain name disputes. Burgar may perhaps be best known as the registrant of the domain name <brucespringsteen.com>, which he successfully defended against the singer in an early (January 2001) UDRP decision.

I often refer to the <brucespringsteen.com> decision when talking about the history of domain name disputes and the lack of certainty that exists in the UDRP system. In that controversial case, Burgar filed what the panel described as "a substantial response." A divided three-member panel found that Springsteen had failed to prove two of the three required UDRP elements, largely because of Burgar's non-commercial use of the domain name, and allowed Burgar to keep the domain name, which he retains to this day (under the registrant name "Bruce Springsteen Club"), although it does not appear to be used in connection with an active website.

Despite Burgar's surprising success in the <brucespringsteen.com> case, he lost a number of other early UDRP decisions involving celebrity domains, including those for singer Celine Dion, actor Kevin Spacey, and author and director Michael Crichton, all in 2001.

But domain name disputes against Burgar have slowed in recent years, perhaps because many of those celebrities who wanted to pursue their claims already had done so (or decided not to do so). Why Duchovny waited until 2017 to act is unclear, though perhaps the renewed interest in The X-Files may have played a factor. (Recently, Duchovny has been using the domain name <davidduchovnymusic.com>, which was just registered in 2016.)

The Role of Laches

Interestingly, despite the passage of nearly 21 years between registration of the domain name and filing of the UDRP complaint, Duchovny apparently never obtained a trademark registration on his own name, as the UDRP decision refers only to common law trademark rights. While the decision says that Duchovny "adequately pled [his] rights and interests" in his own name, it is surprising that the actor did not obtain a trademark registration before filing the complaint — especially considering that he was in no rush to get the domain name.

As for the delay itself, the panel certainly took note of it, writing: "This Panel lacks equitable powers; therefore, even a delay of 21 years does not implicate laches."

However, the panel did not disregard the potential impact of the delay altogether. In evaluating the bad-faith factor under the UDRP, the panel wrote that it "finds that the record does not support a finding that registration alone of the disputed domain name for 21 years caused any Internet users to be confused as to the source or origin of any goods or services and there were certainly no lost profits or loss of business or goodwill." In other words, the 21-year delay could have undermined Duchovny's case.

However, the panel nevertheless found bad faith, considering Burgar's track record of losing UDRP decisions, "the widespread fame of Complainant as a Hollywood actor," and Burgar's failure to make active use of the domain name.

The fact that Burgar failed to file a response (though not always a decisive issue in UDRP cases) also may have contributed to Duchovny's success in the UDRP case.

No Domain Name Too Old?

While the Duchovny case is, like any legal dispute, dependent on its own facts, it is also a reminder that perhaps no domain name is too old to be considered for a UDRP complaint.