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Taking a Second Bite: Rehearing a Decided Case

The UDRP has no specific rules for rehearing or reconsidering a complaint. It is one of those legal issues left to the ingenuity of panelists and authorized by Rule 15(a): “A Panel shall decide a complaint on the basis of “any rules and principles of law that it deems applicable.” This is precisely what the Panel did in Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO November 10, 2000) when, for the first time the issue was raised, he considered it “by analogy [with] well-understood rules and principles of law relating to re-litigation of cases after a defended hearing.”

This reasoning by analogy (which is the consensus view on refiling of complaints) has most recently been applied in Bridgewater Associates, LP v. Private Registration, FA1511001650226 (Forum January 18, 2016) (Bridgewater 2). On re-hearing the Panel found that Complainant had proved its case; the prior Panel had concluded Complainant failed on the standing requirement, Bridgewater Associates, LP v. Private Registration, FA1509001637996 (Forum October 19, 2015) (Bridgewater 1). Another illustration of doing it right is Alpine Entertainment Group, Inc. v. Walter Alvarez , D2007-1082 (WIPO December 4, 2007). Before we dip into Bridgewater 2 in more detail Grove Broadcasting is a key to understanding why some complainants are denied a second bite.

To succeed in a UDRP proceeding a complainant must demonstrate why it’s entitled to the requested relief. In Grove Broadcasting the Panel concluded that Complainant had “elected to initiate the proceeding without proper documentation or proof.” No complainant can expect indulgence from a Panel for not doing the first time what it should have done (or for bad lawyering!)

Ordinarily, second bites are denied on res judicata grounds—“Parties are expected to ‘get it right’ the first time.’” The Grove Broadcasting Panel listed four circumstances that justify rehearing a decided case, namely a) serious misconduct on the part of a judge, juror, witness or lawyer; b) perjured evidence having been offered to the court; c) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or d) a breach of natural justice. A fifth circumstance more generally associated with cases from the Forum (previously National Arbitration Forum) is based on approval of the prior panel to submit a fresh complaint or dismissal without prejudice (an example of proceeding approval is Skyy Spirits LLC v. Stanislaw Krzenszczynski, FA0903001254423 (Forum May 20, 2009).

Of the four traditional principles the most likely basis for reopening a case is newly discovered evidence. This means that evidence that could have been found with diligent effort should have been. In Grove Broadcasting 1 Complainant had been prodded to supply the missing evidence by the previous Panel’s issuance of a procedural order (Rule 12). In Grove Broadcasting 2 the Panel gives an example of what could Complainant could have done: “If the information sought by the previous Panelist had been unavailable through no fault of the Complainant, but because of the inability of the Jamaican Companies’ Office to respond in a timely fashion, then there should have been some independent evidence of that unavailability, such as a letter from the Registrar of Companies.” There’s a two-fold lesson here: first, don’t commence a proceeding until there is sufficient proof to prevail, and second don’t seek an indulgence from the second Panel for failing to do what should have been done the first time!

Bridgewater 1 and 2 are different in that Complainant presented sufficient evidence the first time for the Panel to determine that Respondent’s <bwater.com> was targeting Complainant but denied the complaint because the similarity between domain name and trademark didn’t add up to confusing similarity; similarity of part is not sufficient. The Panel held that “BWATER could refer equally well to many other terms (e.g., backwater, blackwater, bluewater, brightwater, broadwater, etc.”

In discussing Bridgewater 1 in an earlier blog I thought the Panel’s denial of the complaint was inconsistent with its findings. In accepting the refiled complaint, the second Panel based its decision on newly found evidence; sensibly, it stayed away from criticizing the first Panel’s reasoning. In the interim between the award in Bridgewater 1 and the commencement of Bridgewater 2 Complainant received a Benelux certificate of registration for BWATER. It may be recalled that a pending application for trademark does not satisfy the first requirement unless there is sufficient evidence of secondary meaning which was the ground for denial cited by the Panel in Bridgewater 1.

However, the registration of a trademark after the date of the prior UDRP decision has been held to constitute the “discovery of credible and material evidence which could not have been reasonably foreseen or known at trial.” Bridgewater 2 citing among other cases Nature Path, Inc. v. Structural Integrity Corp., FA 1364285 (Nat. Arb. Forum Feb. 10 2011). Where there is newly discovered evidence, as in Bridgewater 2 or other qualified circumstance which falls under the same heading such as a significant change of use of the website, as in win.rarGmbH v. Win Road Assistance Repairs Pvt. Ltd., D2015-0398 (WIPO June 2, 2015) the complaint (quoting the Bridgewater 2 Panel) “should be reviewed de novo by the new panel taking into account any res judicata created by the previous panel’s decision.”

That a later registered trademark can trump an earlier registered domain name has to be explained because ordinarily for that temporal sequence there could be no registration in bad faith. As we saw in Bridgewater 1 Complainant lost on the issue of standing on both elements of the first requirement—that is, (a) not identical or confusingly similar to b) a mark in which it has a right. In contrast a subsequently registered trademark affirmatively supports the first element but it doesn’t necessarily support the second; there is still an issue as to whether the now registered BWATER had a market reputation prior to the registration of <bwater.site>. This defect of proof for the first Panel was answered by the new Panel “accept[ing] the Complainant’s argument of common law rights dating back to the BWATER trademark’s first use 15 years ago, well before the registration of the disputed domain name,” thus fulfilling both elements of paragraph 4(a)(i) of the Policy.

Obviously, in assessing facts Panels can differ but the flaw in Bridgewater 1 is partly institutional; this is because in rejecting the evidence for standing while recognizing (but refusing to accept) evidence of abusive registration some panelists adhere too strictly to a procedure that limits them from deciding on the entirety of the evidence on the basis of a perceived failure of evidence on common law rights. This doesn’t make sense in Bridgewater 1 because the Panel stated openly that it had no doubt Respondent had Complainant “in mind” in registering <bwater.site> but was unable to shake his adherence to the procedure that the complaint should be dismissed on a finding of no standing. This is unfortunate because there are certain cases, including Bridgewater 1, in which there is sufficient evidence to support abusive registration and for which complainant is entitled to the benefit of doubt when it comes to common law rights.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.

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