WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Knot, Inc. v. Ali Aziz
Case No. D2008-0033
1. The Parties
The Complainant is The Knot, Inc., New York, United States of America, represented by Kenyon & Kenyon, United States of America.
The Respondent is Ali Aziz, Karachi, Pakistan.
2. The Domain Name and Registrar
The disputed domain name is registered with DSTR Acquisition VII, LLC d/b/a D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2008. On January 10, 2008, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a D a request for registrar verification in connection with the domain name at issue. On January 10, 2008 the registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2008.
The Center appointed Dr Clive N. A. Trotman as the sole panelist in this matter on February 11, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On February 13, 2008, the Panel authorised the Center to forward an unsolicited Supplemental Filing that had been received from the Complainant.
4. Factual Background
The available facts are essentially those provided by the Complainant.
This is a refiled case. The Original Complaint against the same Respondent in respect of the same disputed domain name was heard by a Panel of three and was rejected by a majority decision in October, 2007. The Complainant seeks a rehearing of the case.
The Complainant is The Knot, a business that has had since 1998 an internet presence as a provider of goods and services associated with weddings. In 1999 The Knot had over 500,000 members, became a publicly traded company and continued to grow in membership numbers, its website recently attracting 3.2 million unique visitors per month. In 2000 and 2001, The Knot was voted Forbes Favorite Wedding Registry. It has received other substantial media publicity including 30 articles in The New York Times.
The Knot owns United States Trademark Registration No. 2,136,948 covering THE KNOT for “computer services, namely, providing wedding and marriage advice, information over a global computer network, providing on-line chat rooms for real time interaction with other computer users in the field of weddings and marriage and offering merchandise relating to weddings and marriage via an on-line computer”. The Complainant’s exclusive rights in THE KNOT date back at least to August 1996.
The Knot is the owner of the trademark MY KNOT for use in connection with a variety of online services related to weddings and wedding planning. The Knot’s ownership of MY KNOT is partially evidenced by Application Serial Nos. 77/197,074, 77/197,068, 77/197,065, 77/197,058, 77/197,054, and 77/197,042. The Knot’s rights in MY KNOT date back to at least as early as June 15, 2001.
The date on which the disputed domain name was registered is itself in contention.
5. Parties’ Contentions
A. Complainant
(i) Application for a Re-Filing
The contentions of the Complainant include the following.
The Complainant refers to the Original Complaint (The Knot, Inc. v. Ali Aziz,WIPO Case No. D2007-1006) and contends that the adverse majority decision was primarily on the grounds that the Complainant allegedly failed to submit either evidence regarding the use of the MY KNOT trademark in 2001 (at the alleged time Respondent registered the disputed domain name) or evidence that THE KNOT trademarks were well-known in 2001, notwithstanding ownership of several incontestable U.S. trademark registrations dating back to February 17, 1998.
The previous Panel did not afford the Complainant the opportunity to submit additional evidence under Paragraph 12 of the Rules. The new Complaint includes evidence that the Complainant had common law rights in the MY KNOT trademark at least as early as June 15, 2001. THE KNOT trademarks were registered and well-known long before the Respondent allegedly registered the disputed domain name on December 23, 2001.
New evidence reveals that the Respondent could not have registered the disputed domain name until after August 2005. The Respondent is a known cybersquatter who appears to be warehousing over 800 domain names including derivations of internationally known trademarks. The disputed domain name is parked at the IP address 216.65.41.188, which is used by cybersquatters.
New evidence reveals that the prior registrant of the disputed domain name, Sumirah Ahmad, is a known cybersquatter who is connected with the Respondent.
The Complainant contends that although there is no provision for an appeal or reconsideration of a panel’s decision, its application for a refiling should be heard on the basis of precedent and developed jurisprudence. The Complainant cites and quotes from the Decision in Grove Broadcasting Co. v. Telesystems Communications Ltd.,WIPO Case No. D2000-0703 (which noted that because the Policy and Rules are silent on appealing panels’ decisions, “applicable rules and principles of law can be considered in order to achieve justice”); and Creo Products Inc., v. Website In Development,WIPO Case No. D2000-1490 (allowing a refiling because, inter alia, that complainant’s investigations subsequent to the dismissal of its previous complaint revealed that respondent’s assertions were false).
The Complainant contends that the Panel in the Original Complaint founded its decision entirely on the significance of the 2001 registration date for the disputed domain name, and says it has since discovered that it was not registered until after August 2005. The Respondent is warehousing domain names that infringe upon other famous marks and is a known cybersquatter, warehousing and cybersquatting being evidence of bad faith.
The Complainant says the Respondent has been found previously to have used a domain name to divert traffic to competing links (Cingular Wireless II, LLC v. Ali Aziz, NAF Case No. 892865).
The Complainant contends that even if the Panel will not consider the new evidence, the Complaint should be considered because the Complainant was not afforded the opportunity to submit additional evidence in the prior proceeding. The Complainant contends that in Jones Apparel Group Inc. v. Jones Apparel Group. com (WIPO Case No. D2001-1041), the Panel allowed a refiled Complaint because that Complainant should have been given the opportunity by its Original Panel to submit additional evidence showing that it had common law rights in the relevant marks.
The Complainant quotes the criteria from Jones Apparel and argues that the present case is analogous. The principal criteria were: (1) the Original Complaint failed for want of evidence that the Complainant could and should have properly submitted in relation to the threshold requirement for establishing trademark rights; (2) the Panel in the Original Complaint did not invite the Complainant to rectify that omission under Paragraph 12; (3) but for that omission the Panel would have found against a clearly abusive Respondent; and (4) the Respondent failed to respond to either the Original or the new Complaint.
The Complainant contends that, similarly to Jones Apparel, it failed to provide evidence of the use of the MY KNOT trademark prior to the registration of the domain name.
The Complainant contends that the Dissenting Panelist was correct in his opinion that the majority is in conflict with well-settled WIPO precedent that use of a domain name to redirect Internet users to competing organizations constitutes bad faith registration and use under the Policy (American Management Association International v. Mode L, WIPO Case No. D2007-0418; The Knot, Inc. v. In Knot We Trust Ltd., WIPO Case No. D2006-0340). According to the majority, the Complainant should have submitted evidence demonstrating that at the time of registration of the domain name the MY KNOT trademark was in use and THE KNOT trademarks were well-known. The Complainant could easily have provided the panel with additional evidence of US trademark registration for the trademark THE KNOT with a first use date of August 1996 and US trademark applications for the MY KNOT trademark, which contained sworn declarations of first use dating back to June 2001.
As in Jones Apparel, the Panel did not use paragraph 12 of the Rules and ask for a Supplemental Filing.
The Complainant says “the majority found that the Respondent [meaning Complainant, this error traces back to the Original Decision] “has shown that the Disputed Domain Name currently is being used in bad faith” and that [Respondent’s] “use of a domain name to provide click-through sponsored links to another does not grant [the Respondent] rights or legitimate interests in the domain name”. The Complainant contends that the majority would have found for the Complainant if only it had an opportunity to review additional evidence of use of the MY KNOT trademark in 2001 or additional evidence showing that THE KNOT trademarks were well-known in 2001. Similarly, in Jones Apparel, the Complainant’s failure to show any common law rights to the JONES APPAREL GROUP mark prevented that Panel from transferring the disputed domain name. In the present case, the Panel’s failure to request equivalent evidence resulted in the majority Panel’s dismissal of the Original Complaint despite the considerable evidence of bad faith.
The Complainant contends that the majority adjudication of the Respondent’s bad faith was far more certain than the “instinctive understanding” in Jones Apparel, and contends that but for [Complainant’s emphasis] [a lack of] evidence regarding the use of the MY KNOT trademark or evidence that THE KNOT trademarks were well-known in 2001, it would have transferred the disputed domain name to the Complainant.
The Complainant contends that, as in Jones Apparel, the Respondent failed to respond to the original Complaint, and similarly, there is no prejudice to the Respondent in allowing the present Complaint.
(ii) Substantive Complaint
The Complainant contends, with a body of evidence, that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith. As will be seen, it is not necessary to set out the Complainant’s contentions under this heading in detail.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The unsolicited Supplemental Filing from the Complainant was read and found to be of no consequence, accordingly it was not admitted and the Respondent has not been invited by the Panel to submit a reply.
The Panel first has to decide whether to accept the application for a refiling, and if so, the merits of the substantive case.
Application for Re-Filing
The dispute now being considered was heard previously by a Panel of three, which issued a Decision dated October 5, 2007 (The Knot, Inc. v. Ali Aziz,WIPO Case No. D2007-1006). The Complaint was denied, by a majority, as provided for in paragraph 15(c) of the Rules.
In the terms of paragraph 4(a)(i) of the Policy, referring to confusing similarity between the disputed domain name and a trademark in which the Complainant was required to have rights, the Original Panel was not satisfied that the Complainant had any common law rights in the trademark MY KNOT in 2001 or that the trademark was then well known, and would only consider the three elements required under the Policy in relation to trademark rights in THE KNOT. The Panel found the disputed domain name to be confusingly similar to the Complainant’s trade mark THE KNOT and the domain name , the substitution of the word “my” for “the” before the word “knot” being insufficient to negate a finding of confusing similarity.
In the terms of paragraph 4(a)(ii) of the Policy, requiring the Complainant to prove that the Respondent did not have rights or legitimate interests in the disputed domain name, taking into account the Respondent’s failure to respond, the Complainant succeeded.
In the terms of paragraph 4(a)(iii) of the Policy, requiring proof of bad faith registration and use, the Original Panel was divided. By a majority, among other considerations, the Complainant was held not to have provided sufficient evidence to demonstrate that the Respondent intended to trade on the goodwill of the Complainant’s trademarks or to cause confusion by selling competing products. The majority found no evidence that the Respondent was a known cybersquatter or the registrant of a number of well known trademarks. The majority found that they could not, in the circumstances, infer that the Respondent registered the disputed domain name in 2001 for the purpose of targeting the Complainant solely because it was now used for click-through links. The Complainant had shown that the disputed domain name was being used in bad faith, but not that it had been registered in bad faith.
The Original Panel therefore decided by a majority that Paragraph 4(a)(iii) of the Policy was not fulfilled, and the Decision was against the Complainant.
The Dissenting Opinion was that the Complainant did have common law rights in the trademark MY KNOT, noting that the trademark application specified the date of first use as June 15, 2001, which predated the first registration of the domain name on December 23, 2001.
The Dissenting Opinion was that it was highly likely that the disputed domain name was registered to disrupt the business of the Complainant, by the well known click-through device, for the purpose of commercial gain. The nature of the Respondent’s click-through business and usage of the Complainant’s trademark demonstrated constructive knowledge of the Complainant’s trademark.
Decision on the Admissibility of the Refiled Complaint
The Complainant previously filed essentially the same Complaint against the same Respondent and although the case was undefended, received an adverse Decision (The Knot, Inc. v. Ali Aziz,WIPO Case No. D2007-1006). It now wants in effect to appeal that decision on procedural grounds and the availability of new evidence.
The Policy is incorporated by reference into the Registration Agreement between the Complainant and the registrar. According to that Policy, proceedings under paragraph 4 (Mandatory Administrative Proceeding) will be conducted according to the Rules and Supplemental Rules. The Policy, the Rules and the Supplemental Rules do not provide for any appeal, reconsideration or re-hearing of a case after a decision has been properly made.
Nevertheless, applications for a re-filing are sometimes received. In dealing with them, panelists early began to develop jurisprudence and to establish certain precedents (although these are not binding). It is generally accepted that in principle and in parallel with Court procedure, after each party has been given a full opportunity to state its case, there can be no appeal simply because a party did not like a panel’s findings of fact.
In assessing the present application for a re-filing, the Panel has referred particularly to the following authoritative and widely cited cases in the context: Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703; and Creo Products Inc .v. Website in Development,WIPO Case No. D2000-1490.
In Grove Broadcasting, the Hon. Sir Ian Barker QC said:
“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 [or] (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 Creo Products, Panelist Andrew Christie drew attention to further principles likely to be considered in an application for refiling, two of which are especially pertinent: (1) the Complainant has the burden of establishing that the refiled Complaint should be accepted, and (2) the burden is high.
In its application for re-filing, the Complainant sets out various grounds that resolve into two. The first is that in so far as the Complainant previously offered insufficient evidence of the fame of the trademark MY KNOT prior to registration of the disputed domain name, the Original Panel should have sought additional information from the Complainant in the form of a Further Statement as provided for in paragraph 12 of the Rules. The second is that there is new evidence, revealing that the Respondent registered the disputed domain name in 2005 and not 2001 and that the Respondent is a cybersquatter owning over 800 domain names, some of them being derived from famous trademarks.
Paragraph 12 of the Rules
More specifically in respect of its first ground, the Complainant says:
“It appears that had Complainant provided either evidence of its use of the MY KNOT mark in 2001 or evidence supporting its allegations that THE KNOT marks were well-known in 2001, the majority panel would have transferred the Disputed Domain Name to Complainant because the entire panel agreed that the Respondent’s use of the Disputed Domain Name was in bad faith ...”
and:
“Since the panel in the Original Complaint did not afford Complainant the opportunity to submit additional evidence under Paragraph 12 of the Rules, Complainant has refiled this Complaint and the aforementioned additional evidence that unequivocally demonstrates that Complainant had common law rights in the MY KNOT mark at least as early as June 15, 2001 and THE KNOT marks were registered and well-known long before the Respondent allegedly registered the Disputed Domain Name on December 23, 2001”.
In effect the Complainant is pleading that is was denied natural justice owing to the Original Panel’s disinclination to ask for addition evidence in the form of a Supplemental Filing.
To begin with, there can be no assertion as to what the Original Panel “would have” done in any changed circumstances. There is no knowing how they might have probed further into areas such as, for instance, the generic nature of the word “knot”. As to the Original Panel not asking for “additional evidence under Paragraph 12 of the Rules”, this purported ground displays a misunderstanding of the relevant Rule, which reads:
“12. Further Statements
In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”
Rule 12 must be read in the context of the overall procedure, which is intended to be straightforward and expedient whereby the Complainant sets out a case and the Respondent has a fair opportunity to reply. The Panel then makes a decision “on the basis of the statements and documents submitted ...” (paragraph 15 of the Rules). The expectation is that each Party sets out its full case. Further Statements are the exception, are asked for at the sole discretion of the Panel, and might be sought, for instance, for clarification of conflicting evidence, or to redress a power imbalance where perhaps an unrepresented party appears to be seriously disadvantaged. The Policy and Rules set out clearly what is required of each party in presenting its case and there can be no expectation that the Panel will provide individual guidance to a party’s legal representatives on how to do so.
One key area in which the Complainant believes that the Original Panel should have asked for more evidence concerns its common law rights in the trademark MY KNOT in 2001. The Dissenting Opinion in the Original Decision reads in part:
“The Complainant does have common law rights in the trademark MY KNOT and the application specifies the date of first use of this trademark (June 15, 2001), which pre-dates the registration of the Disputed Domain Name. I also disagree with the Majority’s conclusion that constructive notice could not be inferred considering that the Respondent is a Pakistani residing in Pakistan. The Complainant has a very active and wide spread presence on the World Wide Web, where the Respondent clearly locates his clients. In this particular case, the use of the trade mark(s) is not confined to geographic boundaries, where this argument would be accepted. The websites listed on the Respondent’s website, include a large number of United States based websites, in addition to European websites, all of which are specialized in the same business as the Complainant’s.”
This Dissenting Opinion recognised common law rights that the Complainant thinks were not recognised, and was surely expressed to the other members of the Original Panel. Thus it is clear that this point of deliberation was not neglected, but was indeed considered, with the Original Panel dividing over the sufficiency of the relevant evidence. The Complainant now moves to remedy the deficiency of evidence by exhibiting a page from its website dated June 16, 2001, but it could have done this the first time.
Two quotations from the Decision in Grove Broadcasting are apposite to the present case:
“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.”
and later:
“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.”
In the Complainant’s own words, it “... could have easily provided the panel with any additional evidence it required, if only given the opportunity to do so”. It had the opportunity. The Complainant’s first ground for a rehearing, that the Original Panel should have sought additional evidence, is rejected.
Fresh Evidence
In respect of its second ground, the Complainant says:
“Furthermore, new evidence became known to Complainant which reveal [sic] that Respondent could not have registered the Disputed Domain Name until after August 2005 and Respondent is a known cybersquatter who appears to be warehousing over 800 domain names ...”
and:
“New evidence also reveals that the prior registrant of the Disputed Domain Name, Sumirah Ahmad, who owned the Disputed Domain Name in 2005, is a known recidivist cybersquatter ... who is connected with the Respondent.”
The Original Decision was formally dated October 5, 2007, and presumably circulated later. On November 6, 2007 the Complainant engaged a private investigator who provided the purported new evidence, which takes the form of three transcripts from informational websites that appear to be publicly accessible. The private investigator’s affidavit was signed on January 3, 2008, within three months of the Original Decision.
In order for a plea of fresh evidence to succeed, the evidence must not reasonably have been obtainable for the original proceedings. The circumstances above do not convince this Panel that the enquiries fulfilled shortly after the adverse Decision could not have been made before. Without commenting on whether the newly submitted evidence has any bearing on the substantive case, the notion that the evidence is new, within the context, is rejected.
Jones Apparel
The Complainant invites the Panel to follow Jones Apparel, in which a refiled Complaint was accepted and decided in favour of the Complainant. In allowing the refiling, the relevant Panel took into account a line of reasoning that (1) the Original Complaint failed for want of evidence that the Complainant could and should have properly submitted in relation to the threshold requirement of establishing trademark rights; (2) the Panel in the Original Complaint did not invite the Complainant to rectify that omission under Paragraph 12; (3) but for that omission the Panel would have found against a clearly abusive Respondent; and (4) the Respondent failed to respond to either the Original or the new Complaint.
There are obvious parallels, however the Jones Apparel Decision was made specifically “without seeking to establish a fifth ground for overcoming the res judicata barrier”. Moreover, Jones Apparel is distinguished on its facts, including that Panelist’s perception that the Original Decision “gave the green light [original emphasis] in the clearest possible way to refiling the Complaint to correct the omissions in the First Complaint”. The Panelist also said, “The additional detective work set out in the Supplemental Complaint with the refiled Complaint only serves to emphasise the bad faith of the Respondent”. Neither consideration is found by this Panel to apply to the present case, any additional detective work not having yielded previously unavailable evidence.
Conclusions
In the present case, the Panel prefers and sees no reason to depart from the widely followed principles established in Grove Broadcasting and in Creo Products. In summary, in its original undefended case, the Complainant did not present evidence that was apparently available or publicly accessible at that time. The Original Panel dealt with the case in accordance with the Policy and Rules, saw no reason to ask the Complainant’s legal representative to present a better case, and this Panel does not fault the original Panel on its procedure. The findings of fact were reached after due deliberation among three Panelists, were open to them, and the UDRP does not provide a mechanism for appeals on substance. There is as far as this Panel is concerned no newly available evidence that the Complainant could not reasonably have provided at the time the original Complaint was filed. The bar for a refiling is high and the well established reasons why a dissatisfied litigant cannot merely ask for another go need not be rehearsed here.
The Panel finds that Complainant has not succeeded in its application for a refiling. It should be reiterated that this Panel’s Decision has been confined to the merits of the application for refiling under the Policy. The merits of the substantive Complaint need not be considered by the Panel here, and the Panel takes no view on the merits or otherwise of the previous Panel’s original decision. The Complainant will be aware that it may pursue potential remedies in another forum.
7. Decision
For all the foregoing reasons, the Panel declines to consider the refiled Complaint. The previous Decision stands to the effect that transfer of the disputed domain name to the Complainant was refused.
Dr Clive N. A. Trotman
Sole Panelist
Date: March 10, 2008
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