A number of panelists have expressly granted permission to complainants or paved their way to refiling complaints on grounds that would not ordinarily be permitted under the test announced in Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd. D2000-0703 (WIPO November 10, 2000). The Panel in Umpqua Investments, Inc. v. Private Registrations Aktien Gesellschaft, FA1005001324718 (Nat. Arb. Forum June 15, 2010) for example denied the complaint with the surprising ruling that it was “without prejudice” without any discernible basis for inviting the Complainant to refile. The question is, Under what circumstances and on what proof is a complainant permitted to renew its claim? “Without prejudice” is arguably appropriate for certain situations, where the trademark is being currently contested administratively or judicially. In Family Watchdog LLC v. Lester Schweiss, D2008-0183 (WIPO April 23, 2008) for example the Complainant’s trademark registration was being contested before the Trademark Trial and Appeal Board in a cancellation proceeding. In such circumstances, Panels have invited complainants to refile a UDRP complaint once the issue has been resolved, Jonathan Ive v. Harry Jones, D2009-0301 (WIPO May 5, 2009).
The Grove test as refined in Creo Products Limited v. Website in Development, D2000-1490 (WIPO January 19, 2001) is a simple formulation that limits reargument or renewal of a prior application for relief to 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” (the Panel in Grove Broadcasting stated) “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 more rigorous answer to the issue of refiling is provided in Fondazione Arena di Verona v. Rainer Klose (RCK Productions Medien GmbH), D2009-1421 (WIPO May 31, 2010) (citing Creo Products), attempting to reopen and reargue D2001-0566 (WIPO June 25, 2001). The Complainant contended that it had received a decision from the Verona Tribunal in which the Tribunal held that its “trademark rights” existed “long before the disputed domain name was registered.” Evidently, the Verona Tribunal’s jurisdiction is limited. It appears not to resolve the issue of rights to a disputed domain name.
Having a trademark (or a right assimilable to it under Italian civil law) is not conclusive. In the earlier case the Panel “avoided making a determination regarding whether Complainant had established rights in a trademark.” Rather, it determined that the Respondent had “established rights or legitimate interests in the disputed domain name through a bona fide offering of services prior to notice of a dispute.” “[E]ven though the litigious designations are confusingly similar and that Complainant may have well established rights in the designation ‘Arean di Verona’” the Complainant could not prevail in a UDRP proceeding.
The Complainant offered the Verona Tribunal decision as a change of circumstance, but no other basis to support reopening the case. In rejecting the complaint, the Panel made two points that are relevant to an understanding of this issue. First, the “Verona Tribunal does not have some form of appellate jurisdiction regarding legal or factual determinations made by an administrative panel operating under the Policy” any more than “does an administrative panel operating under the Policy … [have] authority to intervene in the processes or decisions of an Italian civil court.” Second, and more to the point, “this Panel finds that Complainant has not presented any materially changed fact postdating the decision by the prior panel in 2001.”