There are lots of crazy UDRP stories out there (domain owners listed as “Mickey Mouse” or “Haclav Vavel”) but, admit it, who doesn’t love a juicy decision on procedural grounds?  This week’s case provides us with an opportunity to consider the application of res judicata (and poor lawyering) in the domain sphere.

Res Judicata – One Shot to Get it Right

As you may remember, res judicata is the legal principle that once a case has been decided it cannot be re-tried.  Were this not the case it could lead to truly endless litigation, more forum shopping, and greater harassment of those involved.  This rule is not present in the UDRP or any other dispute policy of which I’m aware, but it has found its way into case decisions, and thus precedent, under these policies.

Essentially, once a case has been decided it can’t be brought again unless there are certain extraordinary circumstances. These include the first case being overturned on appeal, serious misconduct by a Panel or one of the parties (for example, submitting false evidence), or the discovery of new material evidence which was not available or known at the time of the first case.  While there has been some leeway in early UDRP jurisprudence, more recently Panels have become less forgiving and now, as one decision noted, parties are expected to “get it right the first time.”

The First UDRP Filed Over <>

This week’s case involves the domain (the auDRP is very similar to the UDRP).  Complainant owns the mark CASSHIES in relation to a franchised chain of check-cashing and payday loan businesses. In late 2013 it filed a complaint against the domain owner and, despite the Respondent’s default, lost the case because it hadn’t submitted sufficient evidence on certain key points: This included its own common-law trademark rights and the Respondent’s bad faith registration or use of the domain.  The Panel in that first case tried to be somewhat forgiving, however, and noted that its denial of the complaint was “without prejudice to the Complainant’s right to refile the Complaint in the event that it is able to provide more relevant evidence.”

Second Time’s the Charm?

In October of 2014 the Complainant filed a new complaint and submitted some evidence which was not provided in the first case.  It now claimed that its common-law rights predated the creation of the domain name, pointed out that the Respondent’s website has remained static since 2008 and shows passive holding of the domain, and submitted a photograph of the Respondent’s storefront showing that it was using a name other than “Casshies.”  The Panel addressed these in turn.

  • On the subject of Complainant’s trademark, the Panel noted that “There is no new evidence of common law rights predating the registration date of the disputed domain name.”  It thus decided that there was no basis to overturn the first decision’s finding that the disputed domain name had been registered prior to the existence of Complainant’s trademark rights.
  • Next, regarding the Respondent’s static website, it was held that the Complainant’s assertions on this point were also not new, and so this has no influence on the assessment of possible bad faith behavior by the Respondent.
  • Finally, and most interestingly, the Panel noted that the photograph of Respondent’s storefront, though applicable to the question of bad faith, should not be considered as it very easily could have been submitted with the first complaint. Here, the Panel inferred that “its non-inclusion in the original complaint was an oversight, rather than it being ‘new evidence.’”

Before denying this case for a second time, the Panel addressed the obvious question of why the above points should not be considered despite the first decision being issued “without prejudice.”  It pointed out that allowing a complaint to be refiled is an “exceptional” act and that the refiling complainant has a high burden in meeting at least one of the grounds for refiling.

On the ground asserted here – new evidence of bad faith – the Panel noted that there is a a distinction between “(i) Refiled Complaints that concern the act which formed the basis of the original complaint, and (ii) Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint.” Thus, the “without prejudice” nature of the first decision doesn’t offer Complainant a free pass and eliminate the need to follow precedent. Unfortunately, here, Complainant (and its counsel) failed not once, but twice, to submit sufficient or new evidence that the domain was registered and used in bad faith.  Either the domain was created before the Complainant had trademark rights or perhaps the Respondent was an authorized Casshies franchise (though this was not directly addressed).

So, brand owners are well advised to heed the sage advice of Billy Joel in one of the more obscure songs from his smash “The Stranger” album and “get it right the first time.”

Steve Levy
UDRP Spotlight: Getting It Right the First Time

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