WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grove Broadcasting Co. Ltd v. Telesystems Communications Limited
Case No. D2000-0703
1. The Parties
The Complainant is Grove Broadcasting Co. Ltd., a corporation established under the laws of Jamaica, having its principal place of business at 16 Derrymore Road, Kingston, Jamaica. The Complainant is represented by Ms. Stacey Mitchell of Frater, Ennis & Gordon, Attorneys, Kingston, Jamaica.
The Respondent is Telesystems Communications Ltd. of 590 Fulton Avenue, Hempstead, New York, USA. The Respondent is represented by Mr. Fitzroy A. Beckford of Kingston, Jamaica, its President. The Respondent also has a presence in Kingston, Jamaica.
2. The Domain Name and Registrar
The domain name at issue is "". It is registered with Network Solutions Inc. of Herndon, Virginia, USA ("NSI").
3. Procedural History
The present Complaint submitted by Grove Broadcasting Co. Ltd. was received on June 30, 2000, (electronic version) and July 5, 2000, (hard copy) by the
World Intellectual Property Organization Arbitration and Mediation Center
("WIPO Center").
On July 7, 2000, a request for Registrar verification was transmitted by WIPO Center to the NSI, requesting it to:
(a) Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(b).
(b) Confirm that the domain name at issue is registered with NSI.
(c) Confirm that the person identified as the Respondent is the current registrant of the domain name.
(d) Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar�s WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact for the domain name.
(e) Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
(f) Indicate the current status of the domain name.
By email dated July 18, 2000, NSI advised WIPO Center as follows:
(a) NSI had received a copy of the Complaint from the Complainant as required by the Rules.
(b) The Registrar is the registrar of the domain name registration "".
(c) Telesystems Communications Ltd. of the above address is the current registrant of the said domain name. The administrative contact is Mr. Fitzroy Bedford of 512 South Boro, Bridgeport PO, St. Catherine, Jamaica.
The technical, billing and zone contact is Dave L. Reece of 307 Dunrobia Acres, Kingston, Jamaica.
(d) NSI�s 5.0 Service Agreement is in effect.
(e) The domain name registration "" is in "Active" status.
NSI has adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with the Registrar. The Respondent is accordingly bound by the provisions of the Uniform Domain Name Dispute Resolution Policy.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center, on July 31, 2000, transmitted by post/courier and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was emailed to NSI and ICANN.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by August 20, 2000). It was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
The Respondent filed a Response on August 20, 2000.
On October 17, 2000, WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On October 17, 2000, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.
On October 18, 2000, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on October 23, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by November 6, 2000. However, the Panel called for further submissions from both parties on the question whether the Panel should entertain the proceedings because a defended complaint between the same parties over the same domain name had been rejected by another Panelist appointed by WIPO Center.
In accordance with various timetable orders, both parties made submissions, the last date on which the Respondent�s submissions could be filed was November 2, 2000. Consequently, delivery of this decision has been delayed whilst these submissions have been considered by the Panel.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
("the Supplemental Rules").
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Preliminary Issues
The Complainant had filed a Complaint with WIPO Center on March 14, 2000 under the Uniform Domain Name Dispute Resolution Policy ("UDRP") against the registration by the same Respondent of the same domain name "". This Complaint and a Response by the Respondent were considered by a WIPO Panelist under case D2000-0158 and a decision rendered on May 9, 2000. The learned Panelist rejected the Complaint, largely on the grounds that the second criterion under Rule 4(ii) of the Policy had not been satisfied by the Complainant. In other words, the Panelist considered that the Complainant had failed to demonstrate that the Respondent had no rights or legitimate interests in respect of the domain name.
Rule 4(k) of the Policy advises a Respondent as follows:
Availability of Court Proceedings
"The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel�s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, filed-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our WHOIS database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details). If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel�s decision, and we will take no further action until we receive (i); evidence satisfactory to us of a resolution between the parties; (ii); evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii); a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name."
There were no proceedings brought in any court in Jamaica, the United States or anywhere else as a result of the Panel decision referred to above. The Complainant is resident in Jamaica. The Respondent, whilst doing business in Jamaica, has its principal office in the United States.
There is no procedure in the Policy, the Rules or the Supplemental Rules 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. The basis of the Uniform Domain Name Dispute Resolution jurisdiction flows from an agreement between a domain name registrant and its Registrar. The various Registrars of domain names have adopted the ICANN Policy, which means that a domain name registration can be challenged under the Policy by a trademark holder using the services and procedures of one of several providers authorized by ICANN, including the WIPO Center.
Previous Decision � D2000-0158
Before delivering his decision in D2000-0158, on April 22, 2000 the learned Panelist had issued a request to the parties under paragraph 12 of the Policy seeking:
(a) Evidence from the Complainant that the Respondent has no rights or legitimate interests in respect of the domain name.
(b) Evidence from the Respondent that the Respondent has rights or legitimate interests in the domain name.
(c) Additional evidence or statements that the parties might wish to make on the subject of the Respondent�s rights or legitimate interests.
This request was dispatched to the parties by email on April 22, 2000 and by facsimile on April 24, 2000, requesting a deadline for compliance of 5 p.m. on April 26, 2000 in Vancouver, British Columbia, Canada.
On April 27, 2000, the Respondent replied to the Panel�s request referring to the arguments and the evidence previously submitted by the Respondent. On April 27, 2000, the Complainant replied stating that the request had not been received by it until the evening of April 27, preventing it from responding to the deadline. On April 28, 2000, the Panel decided that the late receipt by the Complainant of the Panel�s email on April 22, 2000 constituted exceptional circumstances within the meaning of paragraphs 14(a), 14(b) and 15(b) of the Rules. Accordingly, the Panelist extended the deadline for complying with his request for additional information to 5 p.m. Geneva time on Wednesday, May 3, 2000.
On May 4, 2000 the Complainant submitted an email contesting an allegation made by the Respondent in the Respondent�s additional submission and a facsimile transmission providing searches from the office of the Registrar of Companies of Jamaica confirming the existence of certain trademark applications and registrations establishing a legitimacy of the Complainant�s ownership of the trademark "iriefm".
The Complainant when responding on May 4, 2000, advised WIPO Center as follows:
"(a) The Office of the Registrar of Companies is responsible for trademark registrations and below is the results of the search conducted by them in the classes that IRIE FM is registered in. They were not able to conduct an exhaustive search in the required time since they operate a manual system and estimate it would take roughly one week to thoroughly search all possible categories and sub-categories of registration.
(b) The original document of complaint was comprehensive and as such we have no additional statements concerning the legitimacy of Grove Broadcasting Company�s ownership of the name "IRIE FM"."
No letter from the Registrar of Companies confirming the delay referred to in paragraph(a) was forwarded by the Complainant.
In his decision, given on May 9, 2000, the learned Panelist decided that the trademark "iriefm" belonged to the Complainant, that the domain name was identical to the mark and therefore the first criterion under paragraph 4(a) of the Policy had been discharged.
The Panelist then noted that it was difficult for a Complainant "to prove beyond a shadow of a doubt that the Respondent has no rights or legitimate interests in the domain name". I pause here to question his expression "beyond a shadow of a doubt" because one would have thought that the normal civil burden of proof, i.e. the balance of probabilities, was the necessary onus of proof for a Complainant to discharge.
The Panelist found that the Complainant had not provided proof, nor made any statements to show that the Respondent did not have any rights or legitimate interests, although expressly requested by the Panel to do so. In his request of April 22, 2000, the Panelist had indicated that such evidence and statements could be satisfied "with searches and/or search reports from the Jamaican Trademark Office and the Jamaican Company Law Office showing whether or not Respondent has any trademark registrations, pending trademark applications, corporate names, society names, business names or trading styles that included the words "irie" or "iriefm".
The Panelist considered that the Complainant had not satisfied the onus on the second required element since, despite his request, no information on the second criterion under paragraph 4(b) had been provided.
Regarding the third criterion under paragraph 4(c), although it was not necessary for the Panelist to have decided this question definitively (because of his finding on the second criterion), he inclined to the view that there was sufficient proof demonstrating that the Respondent had registered and was using the domain name in bad faith. The trademark "iriefm" was well-known, if not famous, in Jamaica at the time the domain name was registered. The inclusion of the letters "fm" in the domain name was consistent with an intentional targeting of the trademark. The Respondent�s stated rationale for selecting and registered the domain name was far-fetched and inconsistent with the ownership of a domain name by a company called Telesystems Communications Ltd. The Respondent had alleged that the "iriefm" indicated words in Hungarian used to describe a social club for foreign students who studied in Hungary between 1986 and 1994.
The new Complaint in this case (D2000-0703) provides information (with supporting annexes) not provided with the Complaint in case D2000-0158, namely:
Manual searches at the Trademark Office, located at the Office of the Registrar of Companies, Jamaica revealing the following:
1. The trademark "IRIE FM" was registered in the name of the Complainant only.
2. The Respondent does not own any registered trademark described as "iriefm" or any trademark using the word "irie".
3. The Respondent does not have any pending trademark applications for "iriefm" or any using the word "irie".
Searches at the Companies Office, Jamaica revealing the following:
1. There is no business name registration current or pending for "iriefm" or any using the word "irie" in the name of the Respondent, although other entities have "irie" as part of their business name.
2. There is no company named "iriefm" or any company using the word "irie" that has been registered by the Respondent, although other companies have "irie" as part of their company name.
The Complainant alleged in the new Complaint that it had never authorized the Respondent or any other company or individual to register the Complainant�s name for use as a domain name.
5. Parties� Contentions on Preliminary Issue
In the present case (D2000-0703), the Panel sought and received further submissions from the parties on the preliminary issue. The Complainant submitted in summary:
(a) The decision of the Panelist in case D2000-0158 was made on a technical or procedural point and not on a substantive issue. There was no decision on the merits and pronouncements made by the Panelist indicated that the preponderance of evidence was in the Complainant�s favor.
(b) The Respondent�s continued holding of the domain name "" has been in bad faith and, under the law in Jamaica, United States and other common law jurisdictions, the concept of continuous breach applies.
(c) The Complainant in case D2000-0158 did not have the benefit of legal advice. The principles of stare decisis, res judicata, issue estoppel and the UNCITRAL Rules are inapplicable to the ICANN dispute resolution process.
(d) The Complainant at the time of filing the first Complainant had considered this a "user-friendly process and not a Court proceeding which needed legal representation." The Complainant was effectively "non-suited": under normal civil Court procedures, a non-suit entitles a party to a fresh hearing on the same pleadings.
(e) Courts of final resort treat the principle of stare decisis as a rule of practice, rather than a rule of law. For example, the Judicial Committee of the Privy Council, as Jamaica�s Court of final resort, is not bound by its own decisions. Lack of an appeal process exacerbates the Complainant�s position. If the Complainant is not allowed a hearing, then the Respondent will remain in continuing infringement of the trademark.
(f) The reason why the Complainant was unable to comply with the request from the previous Panelist for further evidence was that it had not been able to obtain the information within the short time limits available imposed. The office of the Registrar of Companies in Jamaica was alleged to have been unable to conduct an extensive search because it operated a manual system and it would take a week thoroughly to search for principal categories. The inability of the Complainant to meet this request, in many jurisdictions, would form a basis for a rehearing or appeal based on the grounds of fairness.
(g) Rule 4(k) of the Policy makes it clear that mandatory administrative proceedings do not displace the jurisdiction of Courts of competent jurisdiction. Rule 4(k) does not address the question of re-litigation.
The Respondent submitted in summary:
(a) The decision in case D2000-0158 was neither hastily decided nor contrary to principle. The issues were identical to those raised in the present Complaint, as were the parties and the remedy sought.
(b) The Policy and Rules are clearly written and easily understood. The process does not require legal help. It is irrelevant that there was lack of legal representation; there was no lack of natural justice to the Complainant. The parties had a full and fair opportunity to litigate the issue and a second claim is frivolous and vexatious. The dignity of the domain name dispute resolution process must be maintained by upholding the decision given on the merits of the case.
(c) The Complainant�s claim to the first Panelist that the Jamaican Registrar of Companies operates a manual system is incorrect. The Respondent says the Registrar has been computerized since 1996, with a website since 1997. He points to the Complainant�s exhibiting a computer print-out of the records in support of this assertion.
6. Decision on Preliminary Issue
Under Clause 15(a) of the Policy, a 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". In the present situation, there are no Rules relating to a "reapplication", "rehearing" or "reconsideration" of a Complaint. It is 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.
Different and often less strict principles can apply in cases where a Respondent did not participate in a defended hearing. If it could be proved that a Respondent had not been served with the Complaint, but a Complainant had obtained a finding in his/her/its favor by default, then that fact might constitute a ground for setting aside a Panel decision. The likelihood of such a scenario in a WIPO proceeding is slight. The Respondent is always advised by email of the filing of the Complaint. WIPO Center goes to some lengths to ensure that proper service is effected on the named registrant at the place disclosed in the WHOIS database or in the information supplied to the domain name Registrar. Some registrants provide only a post office box number or a convenience address. If the place of service does not happen to be the Respondent�s address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance. As a final precaution in favor of a Respondent, the WIPO Panel is under an independent duty, after perusing the file, to be satisfied that there was proper service. So one inclines to the view that, in the context of this specialized procedure, failure to serve a Respondent would not be a likely ground for a rehearing.
It is important to note that the WIPO adjudication processes for domain name disputes have attracted almost 2,000 Complaints over the 10 months in which the scheme has been operating. As at the date hereof, some 770 decisions have been rendered. It is not surprising that Panelists are developing a jurisprudence on the Policy on a case-by-case basis by offering interpretations of the Policy as unusual situations occur. Frequently, previous WIPO decisions are cited by parties in their pleadings and by Panelists in their decisions. The only restriction on their ability to do so is that decisions on novel issues may not contravene the Policy or the Rules. But where the Policy and the Rules are silent, applicable rules and principles of law can be considered in order to achieve justice.
The only guidance in the Policy on the re-litigation of a Complaint, other than that given by Clause 15(a) above, is the provision that, if a party does not like the result of a Panel decision duly reached after consideration of the papers, then that party is at liberty to pursue any available remedies in a Court (see 4(k) above). Where a transfer of the domain name is ordered by a Panel, the transfer is put "on hold" for 10 days before it is effected to enable Court proceedings to be commenced. The hold will be continued if proof of a court filing is supplied. Even where a transfer has been effected, there is nothing to stop any party to the ICANN procedure from initiating Court proceedings, provided those proceedings fall within the periods of limitation referable to that Court�s jurisdiction. It should also be noted that, under Rule 15(e) of the Policy a Panel can find that a dispute is not within the scope of paragraph 4(a) or that a Complaint is brought in bad faith, either as an attempt at reverse domain name hi-jacking, or primarily to harass the domain name holder.
It 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.
One should be able confidently to say that fraud or corruption is a reason for setting aside a first-instance decision. Translating that principle to the present case, if it were proved that a party to a WIPO administrative proceeding had been guilty of dishonest practice (e.g., submitting forged or untrue copies of trademarks or other documents) or that an attempt had been made to bribe a Panelist, or that a Panelist, despite a declaration to the contrary, had a financial interest in the result, then a Panel decision would obviously be tainted and susceptible to review. In such circumstances, one would imagine that a rehearing application should be entertained, provided there was proper proof of serious allegations.
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."
The incorporation of "further evidence" as a ground for a reconsideration of an ICANN administrative procedure needs careful thought. Certainly, there would have to be solid evidence in support of the three criteria mentioned in the quotation.
Further assistance in solving the dilemma, posed by the silence of the Policy on rehearing applications, is given by the UNCITRAL Model Law on International Commercial Arbitration. This could provide a useful analogy because the UNCITRAL Model Law has been adopted as legislation in many countries throughout the world. Article 34 provides for an arbitration award to be reviewed by a Court. The provision is separate from any right of appeal on a point of law and from the right of computational review or correction of errors under Article 33. The grounds for a review are essentially similar to those found in most Court systems.
"Article 34. Application for setting aside as exclusive recourse against arbitral award
(1) Recourse to a court against an arbitral award may be made only by an application for setting aside in accordance with paragraphs (2) and (3) of this article.
(2) An arbitral award may be set aside by the court specified in article 6 only if:
(a) the party making the application furnishes proof that:
(i) a party to the arbitration agreement referred to in article 7 was under some incapacity; or the said agreement is not valid under the law to which the parties have subjected it or, failing any indication thereon, under the law of this State; or
(ii) the party making the application was not given proper notice of the appointment of an arbitrator or of the arbitral proceedings or was otherwise unable to present his case; or
(iii) the award deals with a dispute not contemplated by or not falling within the terms of the submission to arbitration, or contains decisions on matters beyond the scope of the submission to arbitration, provided that, if the decisions on matters submitted to arbitration can be separated from those not so submitted, only that part of the award which contains decisions on matters not submitted to arbitration may be set aside; or
(iv) the composition of the arbitral tribunal or the arbitral procedure was not in accordance with the agreement of the parties, unless such agreement was in conflict with a provision of this Law from which the parties cannot derogate, or, failing such agreement, was not in accordance with this Law; or
(b) the court finds that:
(i) the subject-matter of the dispute is not capable of settlement by arbitration under the law of this State; or
(ii) the award is in conflict with the public policy of this State.
(3) An application for setting aside may not be made after three months have elapsed from the date on which the party making that application had received the award or, if a request had been made under article 33, from the date on which that request had been disposed of by the arbitral tribunal.
(4) The court, when asked to set aside an award, may, where appropriate and so requested by a party, suspend the setting aside proceedings for a period of time determined by it in order to give the arbitral tribunal an opportunity to resume the arbitral proceedings or to take such other action as in the arbitral tribunal's opinion will eliminate the grounds for setting aside.
Paragraph (2)(b)(ii) of the Model Law refers to the circumstance in which an award may be found to be in conflict with the public policy of a State. Common and well-established grounds for determining that an award is in conflict with public policy -- which have in certain instances been specifically enumerated in national legislation adopting the UNCITRAL Model Law -- include:
(a) the making of the award was induced or affected by fraud or corruption; or
(b) a breach of the rules of natural justice occurred during the arbitral proceedings or in connection with the making of the award.
Fraud or corruption is thus certainly a ground for review, as it is in most judicial systems and, in the Panel�s view, would be for an ICANN proceeding. Given that a WIPO Panel in a defended case receives submissions from both parties, it is hard to see how a breach of the rules of natural justice would occur in this context, unless fraud or corruption were alleged as a breach. That a party considers a Panel did not pay enough regard to that party�s submissions, or that a party considered a Panel to have been wrong in its conclusion, are not grounds to sustain a plea of a breach of natural justice.
The grounds for review in clause 2(a) of Article 34 of the UNCITRAL Model Law do not seem apposite to or likely to occur under the ICANN procedure, given the way in which the procedure works and its built-in system of checks and balances. Breach of the rules of natural justice are unlikely to occur since Panelists receive together the submissions of both parties for consideration. There could be a denial of natural justice in an extreme case, but one is unlikely to occur given that one expects all ICANN providers to exercise quality control and provide Panelists with some adjudicatory or forensic experience and repute. A disgruntled party would have to offer strong proof in order to sustain a rehearing on this ground.
The Complainant�s contentions regarding its lack of legal advice are not sufficient to justify a rehearing. The Rules are easy to understand. The Panelist went out of his way to assist the Complainant when he made an order requesting further submissions, even going so far as to indicate the sort of evidence needed to prove the second criterion. The fact that the Jamaican authorities were unable to provide the information in a timely way should not have been the cause for further delay in the context of:
(a) The Panelist is being required to give a speedy decision.
(b) The indulgence given by the Panelist to the parties, particularly the Complainant, offering it the chance to "patch up" its case.
(c) The lack of any confirmation from the Jamaican authorities of the delays alleged by the Complainant.
After all, it was the Complainant who failed to provide sufficient information that might have discharged the onus of proof. A Complainant should "get it right" the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules. The Complainant here was given an indulgence which other Panelists, in the exercise of their discretion, might not have extended to it.
It is not correct, as the Complainant�s counsel suggests, that the decision of the Panelist was made on a procedural point only. It was clearly a decision on the merits or lack of merits on a substantive issue, namely the second criterion under the Policy. Nor is this a case of non-suit. Such normally occurs at the end of a Claimant�s case and before evidence is heard from the defense. The notion of non-suit has no place in the ICANN procedure, which requires consideration by a Panel of the material presented by both sides and a substantive decision based on the evidence of both sides.
The Complainant submitted that there was a lack of natural justice. Having perused the file, it seems clear that the learned Panelist went out of his way to ensure that both parties knew of his requests. He received submissions from both of them and considered them. It is not for this Panelist to opine whether his decision was right or wrong. There is no indication that the Panelist did other than comply with the rules of natural justice in arriving at his decision. He followed the model format of decision that the WIPO Center invites Panelists to follow. There can be no suggestion of fraud or corruption on the part of either party or the Panel.
It is not true, as impliedly submitted by the Complainant, that the Complainant stands without a remedy. If the Respondent is a flagrant trademark infringer, as the Complainant alleges it is, then one should not have thought it difficult for the Complainant to obtain injunctive relief from the Courts in Jamaica. The Panel imagines that the relevant law is similar to that found in other common law jurisdictions. Since Jamaica still retains the Judicial Committee of the Privy Council as its ultimate Court of Appeal, it is likely that Jamaican Courts would follow Commonwealth and US decisions on cybersquatting, such as British Telecommunications plc v One-in-a-Million Ltd. [1999] 1 WLR 903, NZ Post Ltd. v Leng [1999] 3 NZLR 219 and Panavision International v Toeppen, 141 F.3d 1315.
Nor is it appropriate to refer, as did counsel for the Complainant, to cases where higher Courts have refused to follow their own decisions. That only happens when a Court in the case of A v B refused to follow a decision involving different parties, C v D. Nor do I consider that the present Complaint in case D2000-0703 has been brought to harass the Respondent, thereby justifying dismissal on bad faith grounds under the Policy.
Obviously, applications for rehearing can only be considered on an incremental basis, case-by-case, in the way the common law has developed. But this Panel sees nothing in the UDRP Policy or Rules which mandates that a Panel cannot in an appropriate case refuse to entertain a fresh Complaint made after a defended consideration between the same parties and on the same subject matter over the same domain name. Likewise, in the limited and unusual circumstances discussed above, a Panel could entertain a reconsideration of a Complaint.
The additional evidence presented in this case in effect seeks to supply the information not supplied to the Panelist on the first occasion after his specific request. That is not justification for a new hearing in this case. In a case where a party has had every opportunity to put forward its case, there is no suggestion that the Panel acted in disregard of principles of natural justice; there should not be another opportunity. Indeed, the Policy contemplates that the process should be speedy. There are stringent time limits. Panelists have to give reasoned decisions within tight timeframes. Parties are expected to "get it right" the first time, because there is not necessarily even a right of reply, although the learned Panelist in case D2000-0158 called for further submissions, which he was not required to do.
The only possible ground for the Complainant in this case is the one based on the discovery of fresh evidence. Whilst the second and third criteria mentioned in the English decision quoted on page 9 may possibly have been met, there is just no evidence that this evidence could not have been obtained with reasonable diligence at the time of filing the first Complaint. The Complainant is seeking an indulgence and it should therefore have provided some proof to satisfy this criterion.
If the information sought by the previous Panelist had been unavailable through no fault of the Complainant, but because of the inability of the Jamaican Companies� Office to respond in a timely fashion, then there should have been some independent evidence of that unavailability, such as a letter from the Registrar of Companies. In view of the Respondent�s assertion that the excuse was not correct, such a letter was essential.
Applying the test for a retrial on the ground of new evidence having been discovered, the Panel holds that there has been no attempt to satisfy the requirement that the evidence could not have been obtained with due diligence at the time when the first Complaint was filed. The Complainant, having elected to initiate the proceeding without proper documentation or proof, with no certainty of obtaining the indulgence given to it by the Panelist in the first case (D2000-0158), has to take the consequences.
The integrity of the ICANN Policy and procedure requires that if a reconsideration of the same Complaint is to be entertained, there should be proof that one of the strict grounds discussed in this decision has been made out. The Complainant, apparently relying on the "fresh evidence" ground, has made no real attempt to justify re-opening the case. The submission in this second case (D2000-0703) is merely an attempt to "patch-up" a deficiency in a previously presented case which cannot, by any stretch of the imagination, come within any of the limited grounds that I have endeavored to articulate for granting a rehearing.
7. Decision
For the above reasons, the Panel therefore declines to consider the fresh Complaint on its merits. The Complainant should have presented all of its evidence the first time. It chose not to do so. It has to live with the result. If it does not like this result, the Complainant remains free to take Court proceedings against the Respondent.
Hon. Sir Ian Barker QC
Presiding Panelist
Date: November 10, 2000
Full & Egal Universal Law Academy