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Standards for Refiling Complaint

Refiling a complaint against the same respondent for the same domain name is not permitted as “of right.” It was early decided that “[o]nce a party has been given a defended hearing … and a decision rendered, then a case cannot be re-litigated,” Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO November 10, 2000). However, a closed case may be reopening under certain circumstances where the complainant demonstrates that it comes within the narrow class not barred by res judicata or foreclosed by issue preclusion, but not where the factual circumstances remain the same. In that event, the earlier adjudication bars a reopening of proceedings.

Recent illustrations of the standards for refiling a complaint are AMP Floracel v. Jean Perrin, FA 1358993 (Nat. Arb. Forum December 20, 2010); and VRSim, Inc. v. John Makara, FA1003001314947 (Nat. Arb. Forum April 30, 2010). In common law jurisdictions to reopen a closed case requires proof of 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. Grounds 2 and 3 are the usual battlegrounds in a UDRP case. In neither a court of law nor a UDRP proceeding is a complainant permitted to commence a new proceeding to supplement a prior deficient record. The party offering proof has to get it right the first time.

Some Panels have invited refiling if the circumstances change, although whether the evidence would be sufficient “would be a matter for a subsequent panel to determine,” A. D. Banker & Company v. Domain Invest, D2010-1044 (WIPO September 30, 2010). The Panel noted that

should in future the Respondent use the Domain Name in a manner which can only be explained in some manner by reference to the Complainant’s marks (whether directly or through the means of an algorithm devised by its pay-per-click service provider) that would seriously undermine the credibility of a number of the assertions that have been made by the Respondent and which have been key to the Panel’s findings in this case.

The Panel denied the complaint in Jetfly Aviation SA v. Jens K. Styve / Domains by Proxy, Inc. and Happy Landings S.A., D2010-0244 (WIPO April 5, 2010) because of a pending court proceeding. It would not preclude a refiling “if the Geneva court hands down a decision to the effect that the Respondent has no rights or legitimate interests in respect of the Domain Name, but does not order transfer of the Domain Name to the Complainant, or the said court proceeding should be otherwise discontinued without resolution.” Under those circumstances, “[if] the Complainant thereafter wishes to refile the Complaint with the Center, the Panel believes that the Complainant should be permitted to do so.”

The subsequent acts alleged in AMP Floracel and VRSim, however, were essentially “either a repetition of, or substantially the same as, the acts on which the previous complaint was based,” Furrytails Ltd. v. Mitchell, D2001-0857 (WIPO September 6, 2001). The deficiency in AMP Floracel concerned its alleged trademark rights. It was not the trademark holder of record and “[d]espite the passage of two years [since the earlier decision], the Complaint in this case suffers from the same defects [, namely that it] has once again failed to demonstrate any rights in the trademark, either by assignment or otherwise.”

VRSim failed the first time because the USPTO rejected its trademark for the Principal Register on the grounds that “vrsim” is descriptive for the services being offered, that is “virtual reality simulation.” Registration on the Supplemental Register conferred no priority of right.

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