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Material Change, Basis for Refiling Complaint

Refiling a complaint against the same respondent is not permitted as “of right.” Reconsideration may be granted under certain circumstances where the complainant demonstrates that it comes within the narrow class not barred by res judicata or foreclosed under other principles of quiescence. It would 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. Cases pending in a court of law or removed are outside the scope of the Policy. Paragraph 4(k) of the Policy advises the parties that the “mandatory administrative proceeding requirements … shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced ….”

A prior pending action or one commenced after service of the UDRP complaint in which the disputed domain name is in issue necessarily removes the case from the Panel. If a complaint is filed notwithstanding the prior pending civil action it will be dismissed, as it was in Automobile Atlanta, Inc. v. Treadway Solutions, FA0905001264729 (Nat. Arb. Forum July 20, 2009) because it runs afoul of paragraph 4(k). The Panel stated that it “defers to a tribunal that will have the benefit of all the evidence and, in any case, a UDRP decision cannot be implemented during the pendency of a related civil action. ”

However, if the related civil action is brought to an end without resolution of the domain name claim or is dismissed there is a new factual circumstance that may support commencing a re-filed UDRP complaint. Reconsideration will be granted in cases earlier commenced in a court of law but concluded without resolution of the domain name issue, as in Automobile Atlanta, Inc. v. Treadway Solutions, FA0905001292305 (Nat. Arb. Forum December 18, 2009). The Panel rejected Respondent’s contention that the complaint should be dismissed on the principle of claim or issue preclusion, citing Digital-Logic AG v. Jordano Daemonti, FA 273488 (Nat. Arb. Forum July 9, 2004) (“[A]s to whether principles of claim or issue preclusion apply in proceedings under the Policy … common law principles should not be applied in this relatively new and developing area”) and High Speed Prod., Inc. v. Thrasher Magazine, Ltd., FA 97008 (Nat. Arb. Forum June 20, 2001) (“strict application of principles of claim and issue preclusion could work an injustice.”)

The rules applicable to refiling follow well settled principles applied in a court of law. They were first established in UDRP proceedings in Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO November 10, 2000). The Panel held that to qualify for what in a civil action would be a reargument or renewal of decisions earlier determined, 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; or 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.”

The re-filed complaint in Automobile Atlanta showed that it qualified under the Grove alternative 3 in that the impediment for determination under UDRP had been removed. “Curiously, Respondent appears to labour under the delusion that … dismissal [of the civil action] is of no account, arguing that due to the mediated settlement and the panel’s previous denial, the principles of res judicata should be enforced.” Since the dismissal of the civil action clearly brings it “to an end and the Panel sees no reason why those proceedings should prevent it from rendering a Decision on the present Complaint.”

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