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Second Complaint For Same Domain Name, but Against a Transferee

First generation registrants are favored under the UDRP even if use changes to bad faith while transferees are answerable for their choices from the date of the new registration. It is not disallowed to commence a second proceeding for the same domain name if against a different respondent. At its first performance in 2008, the Complainant in Games Workshop Limited v. Admin, Domain, D2008-1321 (WIPO November 27, 2008)(“Games Workshop 1”) clearly had so little appreciation for its burden that despite “[being given] more than ample opportunity to file an appropriately detailed complaint, [it] …failed to do so. In those circumstances it cannot be surprised at the result.” That was then. But, sometime between November 27, 2008 and January 5, 2010 (the date at which the Complainant first became aware of the current Respondent) there was a transfer. Transfer equals a new registration, which is the date from which is measured a respondent’s right or legitimate interest and its good or bad faith.

The filing of a second complaint as opposed to a refiling is not bared under the doctrine of res judicata. See January 3 Note (Standards for Refiling Complaint). The distinction is made in Games Workshop Limited v. Forge World Quebec Blog, D2010-1844 (WIPO December 21, 2010) (“Games Workshop 2”). In Games Workshop 2 “the Complainant contends that it is entitled to bring this Complaint irrespective of the previous decision due to the fact that there has been a change in registrant of the disputed domain name,” citing AB Svenska Spel v. Andrey Zacharov, D2003-0527 (WIPO October 2, 2003). This time round, the Complainant must have educated itself because it improved its performance. The Panel held

There is no evidence that there is any relationship between the previous registrant and the current registrant, such that they are actually the same entity. In this instance, the Panel concludes that since this Complaint has been filed against a new respondent, it is admissible as a new Complaint.

Games Workshop 1 can be cited as an example of complainant self-destruction in that it utterly failed to make a case despite warning from the Center of deficiencies in the complaint. Because this is an evidentiary misstep the demands upon the parties should be fully understood. The Complainant lost despite the Panel’s apprehension – it “confesses to some slight disquiet about the result” – because the “Complaint contains no information about the Complainant’s business, no information as to the fame of the Complainant’s trade mark and no information as to the use being made of the Domain Name by the Respondent.” Further,

The Complaint features no commentary dealing with the potential issue arising from the fact … that the date of registration of the Domain Name (December 1998) pre-dates the date that the Complainant’s earliest trade mark registration came through to registration…. The Panel has no information upon which to make an informed assessment as to whether or not the Respondent has any rights or legitimate interests in respect of the Domain Name.

The second time round (made possible only because of the change of registration) the Complainant learned to support the relevant facts with documentary proof. “The Complainant has provided printouts of the website resolving from the disputed domain name that clearly show sponsored listings for companies who provide similar goods and services to the Complainant and can therefore be considered competitors.” Unusual combinations of words – here, “forgeworld” – “combined with the content on the Respondent’s website leads to the conclusion that the Respondent had knowledge of the Complainant and its rights when it registered the disputed domain name.” Bad faith use subsequent to good faith registration would have made no difference to the original registrant.

The importance of the AB Svenska decision cited in Games Workshop 2 is in its affirming a distinction suggested in an earlier case between “(i) Refiled Complaints that concern the act which formed the basis of the original complaint, and (ii) Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint,” Creo Products Inc. V. Website In Development, D2000-1490 (WIPO January 19, 2001). Games Workshop 2 and AB Svenska are in the second category and for that reason are considered new actions under the Policy.

 

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