Complainant is Reliance Telecom Limited of Navi Mumbai, Maharashtra, India, represented by Krishna & Saurastri Associates, India.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America, and Sukhraj Randhawa of Escondido, California, United States of America, represented by Seltzer Caplan McMahon Vitek, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 27, 2014. On June 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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" or "UDRP"), 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 Respondent of the Complaint, and the proceedings commenced June 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response July 8, 2014. The Response was filed with the Center July 8, 2014.
The Center appointed Christopher J. Pibus, David Perkins and The Hon Neil Brown Q.C. as panelists in this matter on August 6, 2014. The Panel finds that it was properly constituted. Each member of 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.
The Administrative Panel Procedural Order No. 1 was issued on August 15, 2014. Responses to the Order No. 1 were received from both Complainant and Respondent. A further Administrative Panel Procedural Order No. 2 was issued on August 25, 2014. Respondent provided a response to the Panel Order No. 2 on August 27, 2014. 4. Factual Background
Complainant is a member of a group of companies which operate in India and internationally under a variety of business names which include the word "reliance". Complainant was originally incorporated as Reliance Telecom Private Limited in 1994. Complainant's business traces its history back to the founder, Mr. Dhirubhai Ambani's textile manufacturing business under the name Reliance Industries Limited, which was established in 1966.
The Complainant, Reliance Telecom Limited owns Indian Trademark Registration No. 892419 dated December 17, 1999 for the trademark RELIANCE in association with Class 9, and Indian Trademark Registration No. 892420 dated December 17, 1999 for the trademark RELIANCE in association with Class 16.
The disputed domain name was registered on September 21, 1997 in the name of the Respondent, Sukhraj Randhawa. The disputed domain name does not revert to an active website at this time. 5. Discussion and Findings: Re-Filing of the Complaint
On August 20, 2013, prior proceedings were filed by Complainant against Domains ByP and Sukhraj Randhawa with respect to the same domain name ,WIPO Case No. D2013-1470 ("First Complaint"). A decision was rendered on October 8, 2013, denying the First Complaint, on the grounds that Complainant had failed to establish bad faith:
"In this case the Panel has been asked to infer the intention of the Respondent in registering the Domain Name 16 years ago, in the absence of any evidence from the Respondent, any evidence about the Respondent other than its name, and any evidence of the Complainant's reputation in the RELIANCE Mark, both in India and internationally, 1997. In the present case, by reason of the limited evidence provided by the parties, the Panel finds that the Complainant has not satisified its burden of showing that circumstances that bring the case within the provisions of paragraph 4(b) of the Policy exist, or other facts showing that Respondent registered the Domain Name in bad faith."
The parties and the disputed domain name in the First Complaint are identical to the parties and subject matter in the present case. In these circumstances, this Panel must address the threshold issue of whether this re-filed case is entitled to proceed under the Policy.
The principles which govern the re-filing of complaints have been well-developed in prior cases, particularly Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703, Creo Products Inc. v. Website In Development,WIPO Case No. D2000-1490, and more recently in The Knot, Inc. v. Ali Aziz,WIPO Case No. D2008-0033.
The most frequently cited passage from Grove Broadcasting provides the broadest context for the sort of analysis which must be undertaken:
"One must resort to the broad principle found in 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 forseen 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."
Subsequent cases developed more precisely defined principles, focussing on what exactly a complainant petitioning for re-filing must overcome:
"(i) the burden of establishing that the refiled complaint should be entertained under the Policy rests on the refiling complainant;
(ii) the refiling complainant's burden is high; and
(iii) the grounds which allegedly justify entertaining the refiled complaint should be clearly identified by the refiling complainant."
The Trustees of the University of Pennsylvania v. Moniker Privacy Services, M,WIPO Case No. D2007-0757; Creo Products Inc. v. Website In Development, supra.
Complainant advances two principal arguments, (mirroring the language in Grove Broadcasting) in support of the re-filing of this Complaint: (1) "Discovery of credible and material evidence which could not have been reasonably foreseen or known; and (2) "Breach of natural justice/due process".
With respect to the first argument, the "new" evidence put forward by Complaint relates primarily to the results of searches conducted by Complainant using the Reverse WhoIs Look-up function on the website "". In the First Complaint, Respondent never filed any sort of responding materials, but he did communicate with the Center by email after the decision in his favour was released in October, 2013. That email communication was seized upon by Complainant as it revealed a specific email address linked directly to Respondent. Complainant submits that this new email identifier then permitted new and further investigations which uncovered (through reverse WhoIs look-up searches) the fact that Respondent owned multiple domain names, some of which included well-known trademarks. According to Complainant, this evidence constitutes a pattern of conduct of registering famous trademarks, which is directly relevant to the establishment of bad faith under the Policy.
Respondent characterizes the re-filed Complaint as an attempt to "patch-up" previous deficiencies, which falls short of the special circumstances required to permit a re-filing. Respondent urges the Panel to adopt a strict view in considering the circumstances in which a re-filing can properly be made, citing Grove Broadcasting:
"[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".
With respect to Complainant's "new" evidence, Respondent denies that the list of other impugned domain names could only have been discovered through the specific email address, as claimed. The evidence does show that the reverse WhoIs look-up search was conducted through Respondent's name, which was previously available to Complainant when it was pursuing the First Complaint. Respondent argues that his disclosed email address did not in fact lead to the new discovery of his portfolio of domain names, as that information must have been previously available through the reverse WhoIs look-up search under his name Sukhraj Randhawa. Accordingly, Respondent argues that this "new" evidence could have been foreseen or known in a full investigation prior to the First Complaint.
With respect to the second ground for re-filing, Complainant alleges breach of natural justice and due process in the conduct of the First Complaint. In particular, Complainant alleges that it was "deprived of the opportunity to be heard and/or produce additional evidence in exercise of the Panelist's discretion under Rule 12", relevant to the issue of bad faith. Complainant indicates that it was difficult to obtain evidence showing the existence of its trademark rights and the reputation of its business in the period prior to the registration of the disputed domain name in 1997. Documentary evidence "could not readily be found in the archival records". Corporate re-structuring resulted in Complainant having to expend "great effort, time and money" to locate the evidence which it ultimately produced in the re-filed Complaint. Complainant claims that it was deprived of the opportunity to bring forward this evidence, because the Panel in the First Complaint failed to request additional evidence under paragraph 12 of the Rules.
The Panel is fully aware of its responsibility to ensure that parties to a dispute under the Policy are entitled to a fair opportunity to raise arguments and bring forward the full range of supporting evidence required to present or respond to a case. However, it is the responsibility of the parties themselves to conduct the case according to the Rules, and in particular to bring forward the evidence necessary to satisfy or refute the specific grounds under the Policy that are in issue in each proceeding. It is not up to the Panel to identify or request the categories of relevant evidence in their respective cases.
In the circumstances of this re-filed case, the Panel has been particularly attentive to the requests of both parties to file additional material, and has received supplemental filings on a number of points. With the benefit of these materials, the Panel is in a position to make an informed decision on the threshold issue of re-filing.
The Panel notes that the facts and argument in this matter are strikingly similar to those raised in The Knot, Inc. v. Ali Aziz, supra. In that case, complainant sought to re-file based on: (i) new evidence that respondent was a known cybersquatter, who was warehousing over 800 domain names and (ii) denial of natural justice in that the original panel failed to ask for additional evidence by way of a supplemental filing. As outlined below, it is helpful to consider the panel's reasons for rejecting the re-filed complaint in The Knot, Inc. v. Ali Aziz, supra, given the similarity in the factual circumstances.
Complainant's first argument is that the re-filed case should be permitted because of newly discovered evidence that could not have been reasonably foreseen or known at the time of the initial hearing. The Panel acknowledges that this type of new evidence could, in the appropriate circumstances, result in a proper re-filing. However, the circumstances on which Complainant relies in this case are not sufficient to warrant a further proceeding between the same parties over the same domain name.
The Panel is not convinced that Complainant could not have uncovered the existence of multiple domain names held in the name of Respondent Sukhraj Randhawa during the pendency of the First Complaint. At that time, upon becoming aware of Respondent's identity, it was open to Complainant to conduct reverse WhoIs look-up searches, which would evidently have turned up the list of domain names belatedly uncovered by Complainant as a foundation for this second Complaint. The use of reverse WhoIs look-up technology is well-known and widely adopted. Complainant has failed to explain why this form of rudimentary fact-finding was not employed in the investigation leading to the First Complaint.
This analysis leads to the same conclusion reached in The Knot, Inc. v. Ali Aziz, supra, where the panel rejected the characterization of the evidence as "new" in light of the fact that it was generated from publicly accessible websites shortly after the original decision was rendered:
"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."
In the result, the Panel accepts Respondent's characterization that this re-filing, on the basis of new evidence, represents an attempt to "patch-up" the flaws in the original complaint. Complainant must bear the responsibility for not having uncovered that evidence in the first instance.
With respect to the allegations of breach of natural justice/due process, the Panel finds that these submissions are unfounded. To cast blame on the Panelist for breach of natural justice is to misapprehend the fundamental responsibility of Complainant to bring forward sufficient evidence to support all necessary elements of its case. In dealing with similar arguments in the The Knot, Inc. v. Ali Aziz, supra, the Panel considered the application of paragraph 12 of the Rules:
"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 of 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."
In this case, it must have been apparent to Complainant from the outset that its registered trademark rights actually post-dated the registration of the disputed domain name (September 21, 1997). Consequently, Complainant ought to have recognized that it was facing a fundamental challenge to establish the existence of prior trademark rights and the extent of reputation sufficient to satisfy the terms of the Policy. It was Complainant's obligation to meet that burden. It was not the original Panelist's obligation to remedy the manifest gaps in Complainant's case. In the re-filed case, this Panel actually afforded Complainant an additional opportunity (through the Panel Order No. 1) to bring forward evidence that could establish these trademark rights, but the best Complainant could provide was a redacted Trademark Management Agreement to which it was not a party and which did not actually establish relevant trademark rights in RELIANCE or RELIANCE GROUP in the hands of Complainant itself.
In all the circumstances, the Panel denies the re-filed Complaint. However, the Panel wishes to note that its 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 Complainant will be aware that it may pursue potential remedies in another forum. 6. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
David Perkins
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: September 11, 2014
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