Internet AG -v- SSL

In Grove Broadcasting Co. (WIPO Case D2000-0703) the administrative panellist noted that there is no procedure in the UDRP, or either the rules or the supplemental rules governing the reference, for either an appeal against a Panel’s decision or for a reconsideration of a Panel’s decision once it has been given on a Complaint. (It should be noted that the DRS Policy can be distinguished in this regard as there is provision for an appeal under the DRS process.) He noted that under Clause 15(a) of the UDRP, an administrative panelist is required to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". He further noted there are no Rules relating to a "reapplication", "rehearing" or "reconsideration" of a complaint under the UDRP and concluded that it was therefore appropriate to consider by analogy well-understood rules and principles of law relating to the re-litigation of cases determined after a defended hearing. In Grove Broadcasting Co. (WIPO Case D2000-0703) the administrative panellist went on to state "[i]t is not appropriate to refer to a particular legal system in order to resolve the present problem, i.e., whether an unsuccessful Complainant to this special procedure can file an identical Complaint once a first defended Complaint has been rejected. One must resort to the broad principle found in most common law jurisdictions that, once a party has been given a defended hearing in a Court and a decision rendered, then a case cannot be re-litigated unless either (a) the decision is overturned on appeal and (b) limited grounds for rehearing or reconsideration by the first-instance court have been established. Such limited grounds are usually specified in Rules of Court and can include, for example: (a) serious misconduct on the part of a Judge, juror, witness or lawyer; (b) perjured evidence having been offered to the Court; (c) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial and (d) a breach of natural justice. Usually, before ordering a new trial, a Court would have to be satisfied that a miscarriage of justice had occurred." … "In most common law jurisdictions with which this Panelist is familiar, the discovery of new evidence which, with the exercise of due diligence, would not have been reasonably available at the time of the original hearing can, in some circumstances provide a ground for a new trial. The principle as stated by the English Court of Appeal in Ladd v Marshall [1954] 3 All ER 745 , 748 and the New Zealand Court of Appeal in Dragicevich v Martinovich [1969] NZLR 306, 308 is as follows: ‘… first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial: second, the evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive: third, the evidence must be such as is presumably to be believed, or in other words, it must be apparently credible, although it need not be incontrovertible.’" In Creo Products Inc. v. Website In Development (WIPO Case No. D2000-1490). [Andrew F. Christie, Sole Panelist,Dated: January 19, 2001] the panellist undertook a full review of the legal principles applicable to cases under the UDRP where the administrative panel was asked to consider a second or subsequent complaint by the same complainant against the same respondent in relation to the same domain name. Mr Christie defined such complaints as “Refiled Complaints” and this Expert adopts this description for the purpose of the present decision. In Creo Products the panellist considered whether the Complaint, being a Refiled Complaint, could be entertained under the UDRP. At the time of that decision the administrative panel was aware of only two other cases decided under the UDRP in relation to Refiled Complaints viz. Grove Broadcasting Co. Ltd. v Telesystems Communications Limited (WIPO Case D2000-0703) the associated previous complaint being WIPO Case D2000-0158), and eResolution Parker Hannifin Corporation v East Bay Website Company (Case AF-0587) the associated previous complaint being eResolution Case AF-0287. He stated that he agreed with the general observations of the learned panelist Grove Broadcasting Co. (WIPO Case D2000-0703), to the effect that there is nothing in the UDRP or Uniform Rules that provides an answer to the question of whether, and if so, when, a Refiled Complaint may be entertained under the procedure for dispute resolution provided by the UDRP. He concluded that the issue should therefore be resolved by logic, by common sense and by analogy with general principles of law relating to re-litigation of cases. He then went on to distinguish between Refiled Complaints that concern the act which formed the basis of the original complaint, and Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint: “In WIPO Case D2000-0703, the complainant sought to introduce further evidence in relation to the acts pleaded in the previous complaint, in support of the allegation that the respondent had no right or legitimate interest in the domain name (this being the requirement of the Uniform Policy which the complainant had failed prove to the satisfaction of the panel in the previous complaint). In the eResolution Case AF-0587, in contrast, there seems to have been no new evidence sought to be admitted by the complainant. Rather, it appears from the decision that, at most, the complainant merely pleaded and argued the case differently from (and presumably better than) the way in which it was pleaded and argued originally. It also appears from the decision that the panelist in the subsequent case applied an interpretation of paragraph 4(c)(iii) of the Uniform Policy that was a different from (sic) (and more favorable to the complainant than) that which was applied by the panelist in the earlier case. In short, there is nothing in the decision in the later case which disavows the reader from concluding that the complainant was given, and successfully took advantage of, the opportunity to "have another bite of the cherry". This Administrative Panel considers that the approach adopted in eResolution Case AF-0587 is inappropriate.” He went on to state: “6.13. In relation to Refiled Complaints that concern the acts which formed the basis of the original complaint, this Administrative Panel prefers the approach which was adopted in WIPO Case D2000-0703. That approach, which reflects the general principles of law relating to re-litigation of cases, is to make the acceptance of a Refiled Complaint exceptional. That is to say, a Refiled Complaint should only be accepted under the Uniform Policy in specific, relatively narrowly-defined, circumstances. The learned panelist in WIPO Case D2000-0703 identified four categories of circumstances in which a Refiled Complaint could be entertained under the Uniform Policy, as set out in the quotations contained in paragraph 6.8 above. It must be noted that the enumeration of these four categories is prefaced with the words "Such limited grounds are usually specified in Rules of Court and can include, for example …". It is clear that the learned panelist in that case was not purporting to produce an exhaustive list of all possible grounds on which a Refiled Complaint could be entertained under the Uniform Policy; rather, the specified grounds are examples of a more general principle. This Administrative Panel supports the view that the categories of grounds upon which a Refiled Complaint of the first type can be entertained under the Uniform Policy, whilst limited, are not closed.” With regard to refilled complaints that relate to acts that occur subsequent to the first decision he proposed: 6.14. In relation to the second type of Refiled Complaint, namely those that concern acts which have occurred subsequent to the decision on the original complaint, it seems to this Administrative Panel that a different approach is warranted. With a Refiled Complaint of this type, the concept of res judicata does not arise. Because the subsequent complaint concerns acts which occurred after the original decision, it is not an action upon which an adjudication has already taken place; the subsequent complaint is truly a new action under the Uniform Policy. It follows that, subject to one exception, the merits of a Refiled Complaint of this type should be determined in the same manner as any new complaint under the Uniform Policy. The exception is that the acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based (even if those previous acts would likely be included as part of the facts and arguments asserted in the new complaint). That is to say, the acts on which the Refiled Complaint is based need to be such as to mean that the Refiled Complaint is truly a new action under the Uniform Policy, not just an application for readjudication of the previous complaint. (When properly applied, this exception would preclude an unsuccessful complainant from lodging, in the hope that the subsequent panel will come to a different conclusion on the facts, a Refiled Complaint based on subsequent acts that are either a repetition of or substantially the same as the acts on which the previous complaint was based.)” This Expert is conscious that the DRS Policy is quite distinct from the UDRP and that references to the UDRP and decisions made in administrative proceedings under the UDRP should be considered with great caution in the context of disputes under the DRS Policy. Both policies however deal with the rights and obligations of parties in disputes relating to Internet domain names and there are many similarities between the two policies both in matters relating to procedure and to the substantive issues to be decided by the tribunals appointed under the respective procedures. Both policies are also silent on the subject of res judicata and refilled complaints.

In order to address these issues further submissions were sought from the parties on the following issues:

The Respondent did not take the opportunity to make any further submissions.

On the broader issues of principle, the Claimant agreed that once a party has been given a defended hearing in a Court and a decision rendered, then a case cannot be re-litigated unless either (a) the decision is overturned on appeal and (b) limited grounds for rehearing or reconsideration by the first-instance court have been established" should apply to the DRS.

The Complainant was also of the view that the Expert has an obligation to raise the issue of res judicata in order to protect the integrity of the DRS Policy on public policy grounds.

On the issues more specific to the present case, the Complainant submitted that if the criteria set out in Creo Products (WIPO Case No. D2000-1490) were to be adopted should the present Complaint should be categorised as one that is a new set of proceedings.

The Complainant denied that it was seeking to have a second bite of the cherry and submitted that the fact that the Complainant failed to bring an appeal in DRS 0442 should not affect its rights in the present proceedings. Paragraph 16 of the Procedure requires that the Expert determine whether the present Complaint comes within the scope of paragraph 2 of the Policy. It seems to this Expert that, in the absence of any guidance from the DRS Policy, the DRS Procedure or any decisions of Experts under the DRS Policy, the general principles proposed by the administrative panels in Grove Broadcasting Co. (WIPO Case D2000-0703) and Creo Products (WIPO Case No. D2000-1490) can be adopted to decide whether the present Complaint comes within the scope of paragraph 2 of the Policy that requires the Respondent to submit to these proceedings in the circumstances outlined. In doing so, this Expert is affirmed by the fact that these decisions were given after full consideration of the issues involved by two eminent lawyers from the common law tradition and it is noted that the Complainant in its further submissions agrees with this approach also. In applying these principles the following questions require consideration: 9. Are, the Complainant, the Respondent and the domain name in issue the same as in the earlier case? 10. Does the substance of the Complaint relate to acts that occurred prior to or subsequent to the earlier decision? 11. If the substance of the Complaint relates to acts that occurred prior to the earlier decision, is there any grounds for the rehearing or reconsideration? These grounds being limited and exceptional, examples being (a) serious misconduct on the part of the Expert, a witness or lawyer; (b) perjured evidence having been offered to the Expert; (c) the discovery of credible and material evidence which could not have been reasonably foreseen or known at the time of the earlier decision and (d) a breach of natural justice. 12. If the substance of the Complaint relates to acts that occurred subsequent to the earlier decision, acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based The Complainant, the Respondent and the domain name are the same in the present case as in the earlier case. The submissions of the Complainant relate mainly to acts on the part of the Respondent that occurred prior to the earlier decision viz. that the Complainant has now discovered that between June 1999 and January 2000 the Respondent registered over 100 domain names in the .co.uk sub domain. These clearly pre-date the proceedings in DRS 0442 that was initiated on 12 June 2002. Consequently, while this may be new evidence, it does not qualify as coming within the limited grounds upon which an application for re-consideration can be based because this information was available at the time of filing of the complaint in the earlier proceedings.

There is a number of matters that post-date the earlier decision that in the view of this Expert are not sufficiently significant as regards their relevance, materiality or weight to meet the criteria necessary to entitle the Complainant to have a reconsideration of its case viz. that the Respondent was recently named in a complaint filed by Hostway Limited, an ISP, regarding the Respondent’s registration of hostway.co.uk; that in the autumn 2002, a third party visited the Respondent’s website on behalf of the Complainant and made an offer to purchase the Domain Name and the third party has not received a response from the Respondent or UK2Net; and that the Complainant’s fame under its 1&1 and ONEANDONE trademarks has continued to grow.

There is one more significant issue that the domain name in dispute has continued to be connected to the UK2Net website, UK2Net being a major competitor of the Complainant. While this pre-dates the earlier complaint, it is a continuing set of circumstances the nature of which has arguably changed since the Complainant secured registered trademark rights in a mark similar to the said domain name.

The Complainant’s circumstances have strengthened since the earlier decision. The Complainant has obtained a CTM registration for its 1&1 logo, the primary element being “1&1” (CTM 1,877,521) and a UK registration for ONEANDONE (2,262,699). These registrations post-date the original complaint. In the original proceedings the Complainant failed to establish that it had any trademark rights or goodwill under a name similar to the disputed domain name in relation to internet services and was not in a position to rely on any unfair advantage of or detriment to such rights by confusion with a competing supplier of such services.

Based on the criteria set out in Creo Products (WIPO Case No. D2000-1490), is this therefore a new set of proceedings? Can a continuing act of the Respondent, where the Complainant has subsequently secured rights result in issues giving the right to issue a new set of proceedings? If so, the issue of res judicata does not arise. Given that the Complainant has made out a prima facie argument that this is a new set of proceedings, and since the Respondent has not put forward any contrary argument, this Expert is willing to give the Complainant the benefit of the doubt and to admit this Complaint for consideration.

It should be noted that this Expert is conscious that this is a decision based on the particular facts of this case and is further eager to emphasise that in proceeding to consider the substantive issues, this is in no way a review of the earlier decision.

Complainant’s Rights

The Complainant has obtained a CTM registration for its 1&1 logo, the primary element being “1&1” (CTM 1,877,521) and a UK registration for ONEANDONE (2,262,699). Therefore it follows that the complainant has rights in respect of a name or mark that is very similar to the domain name in dispute.

Abusive Registration

As to whether the domain name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS Policy defines “Abusive Registration” as:-

“a Domain Name which either: i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainants’s Rights; or

ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainants’s Rights.”

A non-exhaustive list of factors, which may be evidence that the domain name is an Abusive Registration is set out in paragraph 3.a of the DRS Policy inter alia as follows: “ i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainants or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B. as a blocking registration against a name or mark in which the Complainants has Rights; or

C. primarily for the purpose of unfairly disrupting the business of the Complainants;”

Paragraph 4 of the DRS Policy sets out a non-exhaustive list of factors which may be taken as evidence that the domain name in dispute is not an Abusive Registration. These include inter alia at paragraphs 4.a.i.A and B that

”[b]efore being informed of the Complainant’s dispute,

A the Respondent has used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

B been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;…”

There is no evidence that the Respondent has any defence to the allegation that the registration is abusive. From the evidence submitted by the Respondent, it would appear that there is a prima facie case that this registration has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights in that the Respondent has arranged for or permitted the domain name that is almost identical to the Complainants registered CTM trademark to be connected to the website of a major competitor of the Complainant that is also based in the European Union.

This Expert therefore directs that the Complainant has succeeded in its application and the domain name < 1and1.co.uk > should be transferred to the Complainant.

James Bridgeman

Date: 12 October 2003