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What Factual Circumstances Support Refiling a Complaint?

Unlike some country code Policies, the UDRP makes no provision for an administrative rehearing or appeal by an aggrieved party. The Complainant in Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Pages Marketing B.V., D2011-0057 (WIPO March 15, 2011) (“Sensis 2”) rested its refiling on the following grounds

– new evidence indicates that the Respondent misleadingly suggested in its response in Sensis I [Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page, Yellow Page Marketing B.V., D2010-0817 (WIPO July 14, 2010) ] that it had no presence in Australia;

– the panel in Sensis 1 conducted online “private investigations” and relied on the results without giving the Complainants an opportunity to respond to them;

– additional evidence concerning the Respondent’s conduct has come to light since the filing of the complaint in Sensis I, partly as a result of an investigation by the Australian Competition and Consumer Commission and a pending enforcement action against the Respondent in the Australian Federal Court.

The three-member Panel noted that “the current Complaint must be assessed on its merits in establishing each of the elements required by paragraph 4(a) of the Policy. It cannot be treated simply as an appeal of particular findings or conclusions in the earlier UDRP proceeding.” Of the three grounds, the most interesting (because to my knowledge not previously addressed in any prior decision) is ground number 2.

The Complainant in Sensis Pty Ltd. argued that the first Panel made “private investigations” without giving the complainant an opportunity to respond to them. While a consensus has formed on “private investigations” permitting limited research – it is dealt with in paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP – it raises a fairness issue if the complainant is not given the opportunity to respond. According to the Sensis 2 Panel “it often would be fair – and helpful in reaching a just and informed decision – for a UDRP panel to request information and comments from the parties concerning new or reasonably unanticipated facts or legal issues.” A Panel can do this under Rule 12, that is request statements from the complainant as the Panel did, for example, in Comité Interprofessionnel du vin de Champagne v. Steven Vickers, DCO2011-0026 (WIPO June 21, 2011).

The Sensis 2 Panel proposed applying a standard developed for accepting unsolicited supplemental filings to reply to unexpected issues raised in responses. “In our view, the same standard should apply when the panel is considering new or unanticipated factual or legal material on its own initiative, where that material could be dispositive and where it is reasonably subject to challenge or interpretation.” In applying the standard to the Sensis Complainant, the Panel concluded that it was deprived of a right to respond to the first Panel’s “private investigations.” The Panel explained

Under that standard, the Complainants, which have interests only in an Australian mark, should be given an opportunity to reply to the argument that fair use of the term “yellow page” in other jurisdictions establishes the Respondent’s “rights or legitimate interests” in these Australia-centric Domain Names. Hence, the Panel finds this also to be a sufficient reason for accepting the refiled Complaint, in the interests of achieving procedural fairness and a fully considered decision on this material issue.

The Panel also found in favor of the Complainant on the new facts and fresh evidence requirements under Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, D2000-0703 (WIPO November 10, 2000).

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