The Complainant is Households & Toiletries Manufacturing Co. Ltd. of Amman Jordan, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Kawar, Fathi, El-Maydan Co. Oil Fields Supply of Amman, Jordan. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2018. On August 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2018, 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” 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 the Respondent of the Complaint, and the proceedings commenced on August 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on September 18, 2018. 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
The Complainant is a limited liability company headquartered in Jordan, and a member of the Munir Sukhtian group of companies. The Complainant is the owner of trademark registrations for its HIGEEN, HI-GEEN, and HIGEEN-formative marks, issued in Jordan and in other countries. The Complainant’s marks are used in connection with health, beauty and skin care products, among others.1 The first of the Complainant’s HI-GEEN-formative marks was registered in Jordan on September 19, 1992 (Jordanian trademark registration no. 30909 for HI-GEEN TOOTH GEL, registered September 19, 1992).
The Respondent registered the disputed domain name on December 18, 2004. The record indicates that the disputed domain name has been used with a parking page with an “Under Construction” sign and sponsored links.
This case involves a refiled complaint. The disputed domain name was the subject of a prior UDRP proceeding, Households & Toiletries Manufacturing Co. Ltd. v. Fathi Kawar,WIPO Case No. D2009-1783 (hereinafter “Higeen I”), brought by the Complainant against the Respondent. The complaint was filed on December 24, 2009. The Higeen I panel denied the complaint on March 18, 2010, concluding that the Complainant failed to satisfy the third element of the Policy. 5. Discussion and Findings A. Refiled Complaint
A “refiled complaint” for purposes of the Policy is a complaint concerning a domain name that was the subject of a previous UDRP complaint in which the prior panel denied the case also involving the same complainant and respondent in a subsequently filed complaint. See The Trustees of the University of Pennsylvania v. Moniker Privacy Services, M,WIPO Case No. D2007-0757 (and cases cited therein); see also AB Svenska Spel v. Andrey Zacharov,WIPO Case No. D2003-0527. There is general agreement among UDRP panels that a refiled complaint may be allowed under the Policy only in exceptional circumstances. See, e.g., 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. Such decisions necessarily must be resolved on a case-by-case basis, employing logic and common sense with a view to general principles of law relating to re-litigation of cases.
In considering the circumstances in which refiled complaints should be entertained under the Policy, prior UDRP panel decisions reflect a tendency to draw a distinction between (i) refiled complaints concerning acts that formed the basis of the original complaint, and (ii) refiled complaints that concern acts occurring subsequent to the decision on the original complaint. In either situation, there appears to be consensus regarding application of the following general principles:
(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.
See Creo Products Inc. v. Website In Development, supra. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.18 (summarizing consensus view on refiled complaints).
UDRP panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where a new material evidence that was reasonably unavailable to the complainant during the original caseis presented, or (v) where the case has previously been decided (including termination orders) expressly on a “without prejudice” basis. See WIPO Overview 3.0, section 4.18.
As noted above, the disputed domain name was the subject of Higeen I, the prior UDRP proceeding brought by the Complainant. In Higeen I the Complainant asserted that its HIGEEN mark was well known for the Complainant’s products and that the disputed domain name was identical to the Complainant’s mark. The Respondent contended that the word “Higeen” was generic for hygiene products and could not be monopolized by the Complainant. The Respondent stated he was a physician, and claimed he had registered the disputed domain name for eventual use with a non-profit research program on hygiene, but needed more time to do so. The Respondent denied registering the disputed domain name in order to sell it.
The panel in Higeen I, after concluding that the Complainant had demonstrated rights in its HIGEEN mark, determined that the disputed domain name was identical to the Complainant’s mark. The panel further concluded that the Respondent had failed to demonstrate rights or legitimates interests in the disputed domain name. While the panel noted that the Respondent had not made any use of the disputed domain name other than with a parking page containing sponsored listings, the Panel nonetheless remarked that the Respondent’s stated medical profession conceivably could lend support to his claim of intended use, which the panel did not find implausible in the circumstances.
Turning to the third element of the Policy, the Higeen I panel concluded that the Complainant had failed to establish that Respondent registered the disputed domain name in bad faith, and accordingly denied the complaint. The Higeen I panel cited the following factors as supporting the decision:
- The Complainant was not able to persuade the Panel on that prior case record that the Respondent must have known of the Complainant’s mark at that time;
- The Complainant had not proven to the Panel’s satisfaction that the Respondent intended to trade on the reputation of the Complainant’s mark as such, or deceive users as to a connection of any sort between them;
- The Complaint was only filed 5 years after the registration of the disputed domain name when attempts to purchase the same by the Complainant from the Respondent in late 2009 (and following a cease-and-desist letter in 2005) appear to have failed.
The Complainant asserts as grounds for its refiled complaint that the Higeen Ipanel in its assessment of the bad faith element of the Policy failed to address “essential factors” outlined in WIPO Overview 3.0, section 3.2, which if taken into account would establish bad faith registration of the disputed domain name. The Complainant points to the following factors:
(1) the worldwide fame of the Complainant’s HIGEEN mark due to the wide usage of the mark in Jordan at the time the Respondent registered the disputed domain name;
(2) the Complainant’s HIGEEN mark is an innovative term and not a dictionary word, and is uniquely associated with the Complainant, which according to the Complainant proves that the Respondent was or should have been aware of the Complainant’s mark when registering the disputed domain name;
(3) the timing and circumstances of the registration of the disputed domain name many years after the Complainant registered and began using the HIGEEN mark;
(4) the Respondent’s geographic location in Jordan, where the Complainant’s mark is widely known and used prior to the Respondent’s registration of the disputed domain name;
(5) the Respondent’s lack of rights or legitimate interests and absence of any credible explanation by the Respondent of his selection of the disputed domain name;
(6) the Respondent’s failure to use the disputed domain name or to show demonstrable preparations to use the disputed domain name both before and after the issuance of the panel decision – the latter instance arguably in support of the proposition that the Respondent had given a pretextual justification for its intended use of the disputed domain name in the Higeen I case.
The Complainant also asserts that UDRP panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such a case nor from potentially prevailing on the merits of the case. In light of the foregoing, the Complainant submits that the panel decision inHigeen I should be revisited.
Given that the panel’s decision in Higeen I was handed down on March 18, 2010, whereas WIPO Overview 3.0 was not released until 2017, it can be said that the Higeen I panel could not have addressed per se the “essential factors” that the Complainant ascribes to section 3.2 of WIPO Overview 3.0. To the extent these factors are relied upon in terms of the WIPO Overview being published after Higeen I, this is an entirely misplaced argument, in particular noting that the WIPO Overview summarizes and captures in one convenient location prior case consensus, but certainly does not “create” new factors for panels to consider. The Panel thus appreciates the Complainant’s position to be that the above-articulated factors 1 through 6 collectively provide a basis for entertaining the refiled complaint.
The Panel notes again for clarity that while published after Higeen I, the overall purpose of WIPO Overview 3.0 is to assist in predictability, and that it does so by summarizing panel consensus on particular issues, and that panels are moreover obliged to consider the particular facts and circumstances of each individual proceeding in a manner they consider fair.2 In the Panel’s view, also noting general principles of law relating to re-litigation of cases, UDRP panels have accepted refiled complaints only in highly limited circumstances such as those referred to earlier in this decision.
After careful consideration of the record, and for the reasons set forth herein, the Panel concludes that the Complainant has not satisfied its burden of establishing that a refiled complaint should be entertained. To the extent that the Complainant relies on factors articulated in section 3.2 of WIPO Overview 3.0 as justification for entertaining a refiled complaint, it is incumbent upon the Complainant to demonstrate that any evidentiary relevant developments relied upon by the Complainant arose subsequent to the original UDRP decision. Further underscoring the point made above, the Panel notes that section 3.2 of WIPO Overview 3.0 includes citations to relevant UDRP decisions decided prior to the 2010 ruling in the Higeen I case. The Complainant has proffered no “new” material evidence that was reasonably unavailable to the Complainant during the original case.3 While an argument can be made that the Respondent’s lack of present use for the claimed purpose given in the Higeen I case (a medical/hygiene site) effectively amounts to a “new” development that might call into question the veracity of the Respondent’s claimed intention in registering the disputed domain name, the Complainant has at best left this for the Panel to infer. For example, the Complainant states that “[s]ince the registration of the disputed domain name; which was on December 18th, 2004, almost 14 years now, there is no evidence shows the Respondent use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; which confirms the respondent lack of rights and legitimate interests in the disputed domain name.”4 This latter point is not however in contention insofar as the prior panel found that the Respondent had no rights or legitimate interests in the disputed domain name. The Complainant goes on to say “the fact that the respondent has neither used the disputed domain name nor shown any demonstrable use of the same neither since the disputed domain name was registered (14 years now) nor after the issuance of the decision in the previous complaint (8 years and 4 months now), proves the respondent bad faith.” For what is arguably the lynchpin of the Complainant’s refiled case (i.e., the Respondent’s knowledge and intention at registration), a compelling case would have to have been made out here by the Complainant. This has not been done on the record before the Panel and the best that can be said is that the Complainant has put forward a conclusory allegation as to the issue of registration. Especially in the case of a refiled complaint, more is expected whether in terms of arguments and/or supporting rationale/evidence. It should moreover be noted that reasonable panels may see this issue differently such that the Complainant,5 also noting general principles of res judicata, should not consider the Panel’s above explanation to be an opening for another refiling. 6. Decision
For the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Date: October 29, 2018
1 The Complainant omitted to inform the Panel of the current status of its United States registration for HIGEEN, U.S. Reg. No. 3976577. The trademark registration was cancelled by the United States Patent and Trademark Office (“USPTO”) on January 19, 2018, for failure to timely file an affidavit of use or excusable nonuse under Section 71 of the U.S. Trademark Act. The Complainant also did not inform the Panel of a notice of allowance dated April 26, 2016, for the word plus design mark HIGEEN, U.S. Ser. No. 86526439. The Complainant has disclaimed the exclusive right to use “hygiene” and non-Latin characters that transliterate to “Higeen” apart from the mark as shown.
2 Refer to Introduction of WIPO Overview 3.0.
3 The Complainant objected to the Higeen Ipanel’s finding of acquiescence, based on the elapse of some 5 years before the Complainant filed its UDRP complaint. The Complainant correctly observes that UDRP panels have widely recognized that a mere delay between the registration of a domain name and the filing of a complaint neither bars the complainant from filing such case or from potentially prevailing on the merits. Regardless, the panel’s finding of acquiescence was not the sole basis for the denial of the complaint in Higeen I, and ultimately was not germane to the panel’s decision.
4 In full, the Complainant says: “The Respondent argued in the original case/previous complaint that he is a physician with a
planned non-profit research program on hygiene and is hoping to publish research. However, since the decision date of the previous compliant, which was on March 18th, 2010; almost 8 years, 4 months now, The Respondent does not appear to have directed its medical profession and research towards developing the intended website nor evidence shows the Respondent demonstrable use of the disputed domain name. Nevertheless, the disputed domain name is still containing sponsored links; which evinces that the disputed domain name is currently being used for a commercial purpose; the matter which is confirmed by the panel in the previous complaint.
Hence, the respondent lack rights and legitimate interest.”
5 That is, even if the Complainant had put forward stronger arguments and rationale/evidence, and even if the refiled case was accepted for a decision on the merits, the Complainant may have had some difficulty prevailing.
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