Complainant is Steven Samblis of Glendale, California, United States of America, represented by Steven L. Rinehart, United States of America.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Friends Of PNCH of Newark, Delaware, United States of America, self-represented. 2. The Domain Names and Registrar
The disputed domain names , , , and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2016. On March 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 28, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 1, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 11, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2016. The Response was filed with the Center on May 2, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 13, 2016. 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. 4. Factual Background
According to the Complaint, Complainant “Steven Samblis is a prominent businessman and television personality in California.” Complainant began his career as a stock broker in the 1980s, and he was mentioned in several prominent periodicals (Wall Street Journal, Barons, etc.) as a stock broker and Initial Public Offering (“IPO”) analyst. In the late 1990s, Complainant hosted seminars for The Investors Institute. Beginning in 2008, Complainant co-hosted The Instant Movie Review, “a weekly club show in which he and his co-host critiqued movies from the screen to the camera.” Complainant has “worked as a credited producer on over twenty Hollywood movies and TV series,” and he is also “credited as a writer” for several movies and TV shows.
Complainant is currently the CEO of IC Places, Inc., an over-the-counter publicly traded company (symbol PNCH).
Complainant holds the registered trademark STEVEN SAMBLIS, registered with the United States Patent and Trademark Office on September 1, 2015, in connection with “creating and developing concepts for television programs,” “production of television programs,” “providing on-line entertainment information,” and similar activities. The mark indicates a first use in commerce of February 8, 2005.
The Domain Name was registered on June 7, 2005. The Domain Name was registered on May 28, 2013. The other two Domain Names were registered on December 12, 2013. The Domain Names resolve to a blog site which features commentary, often unflattering, about Complainant and the publicly-traded company of which he is CEO.
Complainant filed a UDRP complaint against Respondent regarding the same four Domain Names in a case decided on January 5, 2015 by a National Arbitration Forum panel (the “Prior Case”). At that time, Complainant had no registered trademark, but asserted common law trademark rights. The panel in the Prior Case rejected the complaint, stating in relevant part: “Based on the Complainant’s contention and evidence submitted, the Panel finds that Complainant has done an insufficient showing that STEVEN SAMBLIS is a trademark protectable and prosecutable under the UDRP and determines that Complainant has failed to illustrate rights in a mark under Policy ¶ 4(a)(i).” 5. Parties’ Contentions A. Complainant
Complainant asserts that it should be permitted to refile a complaint after the decision in the Prior Case. First, Complainant argues that his newly registered trademark STEVEN SAMBLIS justifies the refiling of a complaint. Second, Complainant states that after the decision in the Prior Case Respondent put its registration of the Domain Names under a privacy guard. Third, Complainant alleges that after the Prior Case “Respondent has again attempted to extort the Complainant…in numerous writings and blog posts.” According to Complainant, these blog posts “are calculated to destroy the Complainant personally and professionally, and demean and belittle the Complainant for filing the original UDRP case.”
Complainant asserts that he has established all three elements required under the Policy for a transfer of the Domain Names. B. Respondent
Respondent argues that this refiled Complaint should not be entertained because there is nothing fundamentally new since the Prior Case was decided and Complainant is simply seeking a “second bite at the cherry.” Respondent explains that it put the Domain Names under a privacy protection precisely in order to stop harassment from Complainant.
Respondent admits that it has continued to post criticism of Complainant at the blog site after the decision in the Prior Case, but asserts that this is not “new information” that could be grounds for allowing a refiled complaint under the Policy. In this respect, Respondent maintains that it is merely continuing to do what it has done all along – “commenting on the investment related news and actions of the public company, and the CEO (Complainant) that owns and runs that company.”
Respondent asserts that the belated registration of STEVEN SAMBLIS as a trademark after the Prior Case cannot bestow senior trademark rights on Complainant vis-à-vis the Domain Names. Respondent asserts that Complainant asserted common law trademark rights in 2014 when he filed the complaint in the Prior Case, and the panel in that case found the alleged common law rights wanting. Accordingly, the argument goes, Respondent’s registration of the Domain Names (between 2005 and 2013) predated any recognition of any trademark rights on the part of Complainant.
Respondent argues that he has every right to operate a website critical of Complainant and the publicly-traded company he operates. Respondent notes that he derives no revenue from the website and makes no commercial use of the site. According to Respondent, he is not using Complainant’s name as a trademark. In Respondent’s words:
It’s a ridiculous and nonsensical concept that Respondent is free to express his opinion about another person’s actions, but not permitted to use their name. These disputed domains are about the decisions and actions of the CEO of the company that investors are, or may be, contemplating investing in. Readers must be informed as to who the information being presented is about, or the reader is confused and left to speculation. The use of the CEO’s name is reasonable and necessary as to not confuse the reader, and so that the reader can find the information.
Respondent asks the Panel to deny the Complaint and make a finding that Complainant is guilty of Reverse Domain Name Hijacking (“RDNH”). Respondent’s RDNH request is based essentially on the argument that Complainant’s refiled Complaint has no chance of success and Complainant, represented by counsel, knows it. Respondent states that the refiled Complaint in this case is part of a pattern of harassment and threats from Complainant, with the intention of stifling Respondent’s right to free speech in matters of public interest. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Policy does not expressly allow or forbid the losing complainant in one case to file a second complaint against the same respondent and involving the same domain name. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), addresses the issue of refiled complaints in paragraph 4.4 (entitled “Under what circumstances can a refiled case be accepted?”). The WIPO Overview 2.0 states:
Consensus view: A refiled case concerns the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A refiled case may only be accepted in limited circumstances. These circumstances include 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.
In certain, highly limited circumstances (such as where a panel found the evidence in a case to be finely balanced, and that it was possible that the future behavior of the respondent might confirm bad faith registration and use after all), a panel in a previous case may have found it appropriate to record in its decision that, if certain conditions were met, a future refiled complaint may be accepted. Where this has occurred, the extent to which any such previously-stipulated panel conditions may have been met in any refiled complaint may also be a relevant consideration in determining whether such refiled complaint should be accepted.
A re-filing complainant must clearly indicate the grounds allegedly justifying the refiling of the complaint. The provider with which such refiled complaint has been filed has responsibility for determining if, prima facie, the refiling complainant has indeed pleaded grounds which might justify entertaining the refiled complaint. An affirmative determination is a precondition for provider acceptance of the refiled complaint, and for panel determination of the refiling request and any decision on the merits. A re-filing complainant’s failure to clearly identify that its complaint is a re-filing of an earlier UDRP complaint may constitute a material omission for the purpose of any panel assessment of reverse domain name hijacking.
Complainant does not argue that a breach of natural justice or serious misconduct occurred in the Prior Case. Rather, Complainant appears to rely on allegedly “new information” that was not reasonably available at the time of the Prior Case, namely, the registration of the STEVEN SAMBLIS trademark in September 2015, the fact that Respondent has put its registration of the Domain Names under a privacy guard, and the fact that Respondent has posted negative commentary about Complainant since the decision in the Prior Case.
In CAMPER S.L. v. Detlev Kasten,WIPO Case No. D2005-0056, the panel discussed the proper approach to refiled complaints under the Policy, where the complaints were based on supposedly new evidence emerging after the initial decision adverse to the complainant. The CAMPER panel wrote:
The Panel believes that a broad, common sense approach is called for. The Panel proposes to approach the case before it on the basis that such new evidence, which was not available and could not reasonably have been anticipated to have been available at the time of the original complaint, is the core evidence by reference to which the decision will be arrived at. After all, it was this evidence which has led to the Complaint being accepted for hearing. Had the Complaint merely contained the original material supplemented by ‘more of the same’ and material which could have been discovered earlier and ought to have been included in the original complaint, the Complaint would have been rejected out of hand. If following examination of that core evidence, the Panel is in any doubt as to what the correct decision should be, the Panel will look at that evidence in the context of the rest of the evidence to seek to resolve the doubt. If the Panel is still in any serious doubt, the Complaint must fail.
It has also been held, in another leading case in the context of refiled complaints, that the “burden is high” in justifying a refiled complaint. Creo Products, Inc. v. Website in Development,WIPO Case No. D2000-1490.
The Panel does not believe that Complainant has carried his heavy burden of justifying the acceptance of a refiled complaint. In the Prior Case, Complainant argued to the panel that he had trademark rights in his name. The panel considered Complainant’s evidence and found it insufficient to support Complainant’s claim of trademark rights. While it seems to be common ground that Complainant is a fairly well-known person in certain circles, and it seems indubitable that Respondent was aware of Complainant – the person, not necessarily the trademark – at the time the Domain Names were registered, the panel in the Prior Case essentially held that Complainant had no trademark rights for purposes of that case.
The subsequent registration of STEVEN SAMBLIS as a trademark – even with the USPTO registration showing a date of first use in commerce going back to February 8, 2005, is “new information” in a strict sense, but it is not “new information” in the sense that the asserted trademark rights were unavailable to Complainant at the time he filed his complaint in the Prior Case. Presumably, when filing his trademark application with the USPTO, Complainant had to provide some type of evidence of use of STEVEN SAMBLIS as a trademark going back to February 2005. Why, one asks, was that same evidence – to show that STEVEN SAMBLIS was being used as a trademark – not provided to the panel in the Prior Case? In the Panel’s view, and based on this record, the fact of trademark registration since the decision in the Prior Case does not constitute significant fresh evidence of trademark rights that was simply unavailable back at the time of the Prior Case. Parties to streamlined proceedings like those under the Policy should strive to get it right the first time.
The other “new evidence” is even less impressive than the trademark registration. The Panel attaches little weight here to Respondent’s decision to put the Domain Name registrations under a privacy guard.
With respect to the undisputed fact that, since the decision in the Prior Case, Respondent has continued to post commentary critical of Complainant, the Panel sees this as “more of the same” rather than new evidence. A typical blog website is frequently updated with new information and commentary. If Complainant were allowed to file a fresh complaint against Respondent every time the latter posted a new insult, the Policy would be abused.
In this vein, the Panel notes that the panel in the Prior Case did not discuss the “rights or legitimate interests” issue because she had already decided that Complainant had failed to prove trademark rights. The panel in the Prior Case could very well have denied the complaint on the basis that Respondent enjoys a legitimate interest – his free speech rights to criticize a public figure – by using that figure’s name as a domain name in a non-trademark or commercial sense. The Panel in the present case would be prepared to make just such a finding on this record, and takes that point into account when deciding that this refiled Complaint should be disallowed. Put another way, the supposedly “new evidence” of additional criticism on Respondent’s blog site is of little significance here because it would not have been damaging to Respondent the first time around, and even if the Panel were to accept the Complainant’s new evidence the Complaint would fail on the second element of the Policy.
The Panel declines to accept this refiled Complaint. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: May 23, 2016
Full & Egal Universal Law Academy