In this post I analyse recent UDRP decisions in case of refiled UDRP complaints, addressing the exceptional circumstances where panels accepted a refiled claim and whether they came to a different outcome than in the initial case.
General aspects
UDRP provides for a swift resolution of cybersquatting, namely abusive registration of Internet domain names targeting identical or confusingly similar trademarks.
The procedure takes about 2-3 months. Generally it has one round of written submissions, no discovery, witnesses or hearings taking place.
No appeals are provided, and the decision is enforced by the registrar if no court claim is filed by the respondent within 10-business days term after the registrar receiving information of the decision.
The Policy does not provide for possibility of refilings. These involve identical domain name(s) and parties to a previously-decided UDRP case in which the prior panel denied the complaint on the merits.
However, the jurisprudence exceptionally accepts a refile.
“Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a “without prejudice” basis.” Section 4.18, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”)
I will discuss below few recent UDRP cases administered by WIPO, with various solutions in case of a refiling.
Refiling Accepted, Complaint Allowed
In a UDRP case concerning the domain names <liviu-tudor.com> and <liviu-tudor.info>, an initial complaint was rejected. The reason was the failure of the complainant to establish the first element. Namely, the complainant failed to establish unregistered trademark rights in his personal name.
The panel in the first case has held in this respect that:
“the Complainant has not shown sufficient evidence that he uses his personal name for the purpose of the merchandising or other commercial promotion of goods or services and thus failed to demonstrate unregistered trademark rights in the name “Liviu Tudor”. the Complainant has not shown sufficient evidence that he uses his personal name for the purpose of the merchandising or other commercial promotion of goods or services and thus failed to demonstrate unregistered trademark rights in the name “Liviu Tudor“.
In the refiled case, the panel accepted the refile because the respondent was different from the respondent in the first case. Also, there were legally relevant developments, including the fact that the complainant had obtained in the meantime ownership of a trademark in his personal name.
On the merits, the panel accepted the complaint. It did not find legitimate non-commercial fair use. Also, it considered a possible change of ownership of the domain name in dispute that was not addressed by the respondent.
The panel found that:
“using a domain name to post false or defamatory content – which claim is not rebutted here – is an indicator of bad faith”,
especially in the absence of any explanation from the respondent.
Refiling Accepted, Complaint Denied
The case concerning the domain name <thermowood.com>, involved a dispute concerning a distributorship agreement. The complainant, Lämpöpuuyhdistys Ry (Finland) did not agree with the registration of the domain name by a distributor of one of its non-exclusive licensees.
In the first case, the panel denied the complaint under the third element. It essentially held that the dispute seems to be one over the terms and scope of the distributor’s rights through the licence from the non-exclusive licensee.
It held that:
“[a] proceeding under the Policy is not the appropriate venue for the determination of a dispute of this nature in these circumstances. All the more so if, as Blue Lake claims (but has not substantiated), it has made substantial investments in promoting the disputed domain name.”
In the refile, the complainant relied on a recent (but disputed between the parties) termination of the distributor agreement. It also relied on a less redacted copy of that agreement than was submitted in the first case, purporting to show that it referred to licensing the licensees’ trademarks, but not sublicensing the complainant’s THERMOWOOD mark.
The panel held that these evidentiary issues are potentially relevant and warrant a reconsideration of the second and third elements, therefore accepted the refiled complaint.
On the merits, however, the panel found that the cumulative requirements of the third element are not met, as the respondent appears to have:
“legitimately registered the disputed domain name and initially used it solely in connection with its distributorship of THERMOWOOD products in its designated territory”.
The panel took into account that:
“[t]he Respondent’s website in 2023 and 2024, as shown in screen captures found on the Internet Archive’s Wayback Machine, 2 referred only to THERMOWOOD and Novawood, with no references to other branded products or companies such as are found on the current version of the website following the termination dispute”.
Refiling not Accepted
In the case concerning the domain name <kalyanjewellers.com>, the initial claim was denied. The reason was that the complainant failed to establish that the domain name was registered in bad faith.
The complainant refiled the case. It claimed that the respondent failed to comply with a court order to transfer the disputed domain name to the complainant.
Considering the circumstances of the case, the panel declined to admit the refiled complaint as the:
“[t]he panel in the 2020 proceeding determined, under the terms of the Policy, that the Complainant had failed to establish that the disputed domain name had been originally registered in bad faith, and that the complaint must therefore fail. The Panel finds there to be nothing in the Complainant’s current submissions that requires the original panel’s findings in that regard to be reevaluated, or which otherwise meets any of the criteria mentioned in section 4.18 of WIPO Overview 3.0 for a refiled claim to be accepted. Moreover, the Panel notes that a court has already opined upon the matter and the UDRP does not provide a mechanism for the enforcement of the orders of national courts, which is a matter for the Complainant more properly to pursue through the court system.”
Refiling, a Possibility Foreseen by Panels
According to WIPO Overview 3.0, section 4.18:
“[i]n certain highly limited circumstances (such as where a panel found the evidence in a case to be finely balanced, and opined that it may be possible for future respondent behavior to cast a different light on a panel’s assessment of bad faith), a panel may record in its decision that in the event certain conditions would be met, acceptance of a refiled complaint may be justified.”
For instance, in the case concerning the domain name <franco-suisse.com>, the claim was denied for lack of fulfilment of the third element.
However, the panel observed that one point potentialy against the respondent could evolve and might give rise to grounds for refile.
As such, the complainant proved that the website at the domain name in dispute showed PPC advertisement. The PPC appeared to target the complainant’s line of business. However, the PPC was available “a matter of days after the registration date of the disputed domain name. By the following day, the screenshot shows that the PPC use had ceased”.
Given the overall circumstances of the case, the panel was inclined to view:
“the PPC use as merely temporary stemming from a Registrar-provided parking page that was displayed immediately after the disputed domain name was registered and before the Respondent could attend to it. While the Respondent remains responsible for third-party generated material appearing at the disputed domain name (WIPO Overview 3.0, section 3.5), the Panel does not consider in the specific circumstances of the present case that this is necessarily indicative of the Respondent’s intent to target the Complainant’s trademark.
However, if such targeted PPC use or other indicia showing an intent to target the Complainant were to resume on more than a temporary basis, that might give rise to grounds in respect of which the Complainant could refile the Complaint (for a fuller discussion on refiling”.
In another recent UDRP case, the panel denied the complaint filed by Principal Financial Services Inc. (a United States publicly traded multinational financial services institution). The case concerned the domain name <principal.money> that was used to resolve to a pay-per-click (PPC) webpage. The respondent claimed to have intentions to use the domain name for a technology consulting business.
The panel found the evidence in the case to be closely balanced. Nevertheless, the panel found that:
“in view of all of the circumstances, and although it is a close call, the Panel accepts Respondent’s position that he did not target Complainant’s trademark when registering the Domain Name, but instead registered it for his consulting business, which is unrelated to financial services and the other areas where Complainant conducts its business”.
However, the panel pointed to the fact that future behaviour by respondent could cast a different light on the panel’s assessment of the lack of respondent’s bad faith registration of the domain name. This would happen if the respondent:
“(i) uses the Domain Name for PPC advertising links that target Complainant or the field in which Complainant operates; (ii) on an unsolicited basis, attempts to sell, rent, or otherwise transfer the Domain Name registration to Complainant or to a third-party for valuable consideration in excess of Respondent’s documented out-of pocket costs directly related to the Domain Name; or (iii) uses the Domain Name in connection with products or services directly competitive with Complainant’s business fields, including the financial, insurance, investment, banking, asset management, retirement, real estate, and healthcare fields.”
In a similar case, the complaint directed against the domain name <kitejobs.net> was rejected for the third element not being proved, i.e. the word kite is a common dictionary word and it was not clear that the complainant was targeted, as the use of the domain name did not relate to the pharmaceutical sector, the field of the complainant.
Nevertheless, the panel left open the possibility of a refiling, recognizing the “potential for bad faith use of the disputed domain name”, given “the incorporation of the Complainant’s KITE trademark within the disputed domain name, which [..] is well-known within at least one sector”.
In the case concerning the domain name <cdf-thailandplus.com>, the claim was denied. The reason was that the complainant has not established unregistered trademark rights for the purposes of the Policy. However, the panel pointed to a possible refiling:
“If the Complainant is able to overcome its lack of trademark rights, for example by obtaining a relevant registered trademark, the Panel concludes that, if the Respondent’s activity in question is continuing and proven by the Complainant with the corresponding evidence (for example, showing the Complainant’s use of CDF logos and marketing materials and the reasons why the Respondent’s behavior targets the Complainant), then the Complainant should not be barred by this decision from filing a new UDRP complaint.”
The claim in the case concerning the domain name <cripto.com>, was denied for concurrent court proceedings being considered far better suited for a complex dispute.
The panel noticed that the complainant “may file a future UDRP complaint in respect of the disputed domain name against Respondent after resolution or discontinuation of the United States court proceedings.”
However, the panel had concerns about a refiled case as well, due to the complexity of the case that would not fit under the UDRP regime and might be rejected by the appointed panel as outside the scope of the Policy.
Remarks
While certain developments might justify a refiled claim, this is an exceptional situation and should be carefully considered. For this reason, complainants should be mindful to submit all required evidence from the outset in their cases, to avoid a denial and having to refile.
