Refiling a complaint against the same respondent is not permitted as “of right.” I pointed out in the Note for April 28 that some panelists openly invite complainants to refile a complaint when the factual circumstances change and the new record supports a claim for abusive registration. When the factual circumstances remain the same the earlier adjudication bars a recommencement of proceedings under the doctrine of res judicata. VRSim, Inc. v. John Makara, FA1003001314947 (Nat. Arb. Forum April 30, 2010), refiling to reopen a dismissed claim in VRSim, Inc. v. Makara, FA 1233521 (Nat. Arb. Forum Jan. 2, 2009).

The grounds for recommencing a proceeding were first set forth in Grove Broad Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO November 10, 2000) in which the Panel applied well settled principles established in courts of law. A refiling against the same respondent may be granted under certain circumstances but it does not include denial of the first complaint for insufficiency of evidence or a determination on the merits since that would simply be a repetition of the same facts upon which the previous complaint was based.

Grove Broadcasting held that to reopen a decided case the complainant must show 1) serious misconduct by a judge, juror, witness or lawyer; 2) perjured evidence being offered to the Court; 3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and 4) a breach of natural justice /due process. “The integrity of the ICANN Policy and procedure requires that if a reconsideration of the same Complaint is to be entertained, there should be proof that one of the strict grounds discussed in this decision has been made out.” Ground 3 is the usual battleground in a UDRP case. The Panel in Grove Broadcasting concluded that where the complainant initiated proceeding without proper documentation or proof … [it] has to take the consequences.”

The Grove Broadcating test was further refined Creo Products Limited v. Website in Development, D2000-1490 (WIPO January 19, 2001) in which the Panel held that 1) the burden of establishing grounds for entertaining a Refiled Complaint rests on the complainant; 2) that burden is “high”; and 3) the complainant should clearly identify the grounds for entertaining the Refiled Complaint. The Panel held that a complainant can satisfy its burden by including evidence of “both new acts of the Respondent occurring since the first decision and fresh evidence not available prior to the first decision.” This is what the Panel in Jetfly Aviation SA v. Jens K. Styve / Domains by Proxy, Inc. and Happy Landings S.A., D2010-0244 (WIPO April 5, 2010) had in mind in laying the foundation for a refiling. A judgment in a court of law establishing a party’s right to a trademark decision is “evidence which could not have been reasonably foreseen or known” in the earlier proceeding. Issuance by the USPTO of a certificate of registration for the trademark has been found to support a refiling, Alpine Entertainment Group, Inc. v. Walter Alvarez, D2007-1082 (WIPO December 4, 2007).

In the refiled VRSim the Complainant (whose trademark is on the Supplemental Register) “presented nothing that would support entertaining this second complaint. The Panel finds that this proceeding is barred by the earlier decision.” This can be interpreted to mean that the Complainant offered no new material evidence that could not previously have been offered.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com