Prejudice under the UDRP
A typical question that comes up during a UDRP case is, what happens afterwards if the case is denied? Can you simply try again, or are you prevented from ever filing a UDRP complaint on that particular domain again?
The question involves the legal doctrine of prejudice, in other words, whether a matter has already been determined one way or the other. Under the UDRP, the general rule is that once a complaint has been denied, you may not file another complaint on the same domain against the same respondent. There are some limited circumstances, however, including
when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.
Basically, you have to have a pretty darn good reason, otherwise the UDRP panel will say “too bad, this was already denied once, we’re not going to look at it again. If you don’t like it, you should have challenged it in a court of competent jurisdiction.”
Normally, UDRP panel decisions don’t specifically say that a complaint is denied “with prejudice,” meaning that it cannot be re-filed. However, a recent NAF decision issued a denial “without prejudice,” which I thought was interesting. In this case, which involved two domains — surveyclaim.com and surveyresearchcenter.com — the Respondent didn’t even bother to respond, and was apparently using at least one of the sites in an abusive, phishing manner. The Complainant was the University system of Michigan, which claimed to own rights to the SURVEY RESEARCH CENTER mark. The Panel found that the domain surveyclaim.com was not confusingly similar to the mark, and denied the complaint with respect to that domain on that basis, despite the fact that the domain was being obviously* used in bad faith (a false claimed association with the Complainant and phishing stuff).
*There’s nothing there on the site now, so I’m not sure what it looked like.
The Panel then went on to find that the complaint failed under the rights or legitimate interests prong of the UDRP for the surveyresearchcenter.com domain name, because the Complainant failed to provide any evidence whatsoever of what the domain was being used for. This is pretty standard stuff: a complainant must prove its case, bald assertions of fact are not sufficient, etc.
But the interesting thing was this:
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED without prejudice.
So what does this mean, exactly? Normally, in court, it’d mean the case could be refiled, hopefully with corrections to whatever the defect was. But I’m not sure that this really comports with the WIPO Overview 2.0, #4.4, which I cited above. Certainly the evidence that was not provided here by the Complainant could have, and should have, been provided now. In a later filing, it can’t argue that this evidence wasn’t available previously. And if there’s been no change in the way the domains are being used, it would seem to be impossible to argue that there’s some new use that’s come to light since the first filing. Further, does a Panelist even have the power to issue that sort of a proclamation to a future panel, effectively saying “give them another try”? On a certain level, each UDRP is it’s own distinct animal, and cases explicitly do not have precedential authority, although in practice most UDRP panels tend to (at least sort of) treat them in that way.
All in all, it’s a completely foreseeable result when you fail to provide evidence at all, so I wonder how they’ll get around that in any potential future filing.
Tagged common law trademarks, confusingly similar, denied, evidence, gtld, NAF, rights or legitimate interests, WIPO