WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd Case No. DAU2008-0021 1. The Parties
The Complainants are National Dial A Word Registry Pty Ltd, Phone Name Marketing Australia Pty Ltd, Premier Telecommunications Pty Ltd, Words Work Pty Ltd, Excel Phone Words Pty Ltd, Easy Dial Pty Ltd, Wentworth Enterprises International Pty Ltd, 1300 Australia Pty Ltd, and Inbound Telecommunications Pty Ltd (the addresses of which were not supplied), all of whom are represented by Freehills of Australia.
The Respondent is 1300 Directory Pty Ltd of Sydney, Australia, represented by Guy & Hinton Solicitors of Australia. 2. The Domain Names and Registrar
The following 66 domain names the subject of this Complaint are registered with PlanetDomain Pty Ltd:
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2008. On November 18, 2008, the Center transmitted by email to PlanetDomain Pty Ltd a request for registrar verification in connection with the domain names at issue. On November 24, 2008, PlanetDomain Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
On December 3, 2008 the Respondent by email communication with the Center contended that .au Dispute Resolution Policy ("Policy" or "auDRP") does not provide for multiple complainants who each have separate interests in the domain names the subject of a single complaint, and requested the opportunity to provide submissions as to why the complaint filed in this matter fails to comply with the Policy prior to a determination by the Center whether or not the matter should proceed. The Center responded on the same day, stating that it intended to accept the Complaint "without prejudice to a Panel's ultimate finding", on the basis that any determination as to the Complainants' rights under the Policy "would need to be a matter for the independent Panel on appointment". The Center invited the Respondent to include submissions on the issue of the Complaint's compliance with the Policy in its Response on the merits, but indicated it would accept such submissions prior to formal commencement of the proceedings if the Respondent so wished. The Respondent filed ‘Pre-Response Procedural Submissions' on December 8, 2008.
On December 12, 2008, the Center notified the parties that it had determined that it would, for administrative purposes, proceed to accept and commence the Complaint on the following grounds:
"Without any prejudice to a Panel's ultimate finding in this case, this Complaint has been accepted by the Center and commenced on the basis that, inter alia, any determination as to Complainant's rights under the .auDRP would need to be matter for the independent Panel on appointment. The Center further reserves the right to request that the Complaint, which has been accepted on a consolidated basis principally for reasons of administrative convenience, be separated into individual Complaints should that prove to be necessary in light of subsequent developments. The Panel would also have the power to make such order, or to take any other procedural steps it may consider necessary under the .auDRP and Rules, on appointment."
In accordance with the Rules for the .au Dispute Resolution Policy ("Rules" or "auDRP Rules"), paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2009. In response to the Respondent's request for an extension of time in which to file a Response, the Center on December 19, 2008 extended to January 15, 2009 the date by which a Response was to be filed. The Response was filed with the Center on January 15, 2009. In addition to addressing the merits of the case, the Response also included (in Annex DP-1) ‘Pre-Response Procedural Submissions' (which expanded on objections raised by the Respondent in reply to the Center preliminary request for comments on the issue of multiple complainants).
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on January 29, 2009. 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 Complainants, in their individual capacities, claim to have rights in various "smartnumbers". A "smartnumber" is a telephone number allocated through an auction process, conducted under legislation by the Australian Communications and Media Authority. A smartnumber is a freephone or local rate phone number. A freephone phone number is a 10-digit number beginning with 1800. A local rate phone number is either a 10-digit number beginning with 1300, or a six-digit number beginning with 13. Desirable smartnumbers are either those that are highly patterned (e.g. 1800 222 222) or those that translate to a "phoneword" (e.g. 13 2287, which translates to 13 CATS when the suffix digits are selectively mapped to the letters on an alphanumeric keypad). The smartnumbers in respect of which the Complaints claim to have rights are phonewords. The eighth Complainant, 1300 Australia Pty Ltd, for example, claims to have rights in the smartnumber 13 2277, which translates into the phoneword 13 CARS.
The Respondent is the registrant of the domain names the subject of this Complaint. These domain names take the form of the Complainants' phonewords with the addition of the suffix ".". Thus, for example, one of the domain names of which the Respondent is the registrant is .
Each Complainant claims one or more domain names. Each Complainant has filed this Complaint in their individual capacities. This is clear from the fact that the Complainants neither claim to have any corporate relationship to each other nor to have any joint interest in the phonewords that correspond to the domain names the subject of the Complaint. 5. Preliminary Procedural Issue: Consolidation of Complainants A. Principles of consolidation (i) Issue under consideration
The form of this Complaint raises a novel and important procedural issue: whether a single complaint may be filed against a single respondent by multiple complainants. This issue is hereafter referred to as the issue of "consolidation of multiple complainants". This issue is to be distinguished in certain respects from the issue of whether multiple disputes between the same complainant and respondent in relation to multiple domain names can be consolidated into a single complaint ("consolidation of multiple domain names"). This issue is also to be distinguished in certain respects from two other theoretically conceivable issues: (i) whether multiple disputes between a single complainant and multiple respondents can be consolidated into a single complaint ("consolidation of multiple respondents"); and (ii) whether disputes between multiple complainants and multiple respondents can be consolidated into a single complaint ("consolidation of multiple complainants and respondents"). (ii) Provisions of the auDRP
The first point to note is that the Policy and the Rules make express provision permitting consolidation of multiple domain names. Provision for this is made in two ways. First, under Rules paragraph 3(c), it is possible for a single complaint to relate to more than one domain name, provided the domain names are registered by the same domain name holder. Secondly, under Policy paragraph 4(f), where there are multiple complaints by the same complainant against the same respondent, either party may petition to consolidate the disputes before a single administrative panel. In the event of such a petition, according to Rules paragraph 10(e), the petition shall be decided by the panel.
The second point to note is that the Policy and the Rules do not make express provision permitting consolidation of multiple complainants (or, for that matter, any other type of consolidation involving multiple parties). However, the Policy and the Rules do not expressly prohibit consolidation of multiple complainants. It is the case that both the Policy and the Rules use the language of "complainant", but this alone does not preclude the possibility of the singular including the plural; that is, of multiple legal persons being within the concept of "complainant". Whether or not that is the case requires consideration as a matter of principle, not merely as a matter of grammar. Put simply, the matter of principle is whether a complainant must be a single legal person or entity or instead can consist of multiple legal persons or entities, and, if so, under which circumstances. (iii) General principles
In this Panel's view, a dispute in relation to a domain name in the .au domain space between a complainant and a respondent occurs by way of a "complaint". The filing of a complaint is the principal procedural mechanism by which a legal claim may be brought by the complainant against the respondent, in relation to a domain name under the Policy and Rules. A complaint is brought to a dispute resolution service provider ("DRSP"), and is decided by an administrative panel ("panel"), in accordance with the Policy and the Rules. A complaint typically gives rise to a unitary proceeding. Normally, each complaint would have its own complaint number (e.g. "DAU2008-0021"), its own panel to decide it, and would have the decision of the panel published under the corresponding complaint number. Thus, it is the complaint that can be said to be the fundamental unit of the domain name dispute resolution procedure.
As a matter of principle, this Panel considers that it should be possible for a single complaint to be brought by multiple complainants, where the multiple complainants truly have a common grievance against the respondent. Multiple complainants may have a common grievance against the respondent in a number of instances. One clear instance is where the multiple complainants have a common legal interest in a relevant right or rights that are allegedly affected by the respondent's conduct, as further explained below. Another instance is where the multiple complainants are the target of common conduct by the respondent which has clearly affected their individual legal interests, in the sense described below. (It is possible that there are further instances in which it can be said that the grievance against the respondent may be common to multiple complainants.)
Support for the above proposition can be found in the jurisprudence of domain name dispute resolution in particular, and of dispute resolution in general. The auDRP is similar to the UDRP, and accordingly this Panel has drawn on authority concerning both the UDRP and the auDRP. Consolidation of multiple complainants has occurred in a number of previous auDRP and UDRP decisions. See, e.g., TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Limited,WIPO Case No. DAU2006-0004; Advanced Medical Institute Pty Limited v. World Wide Internet Services (Aust.) Pty Limited, IAMA-3021 2006; 3M Australia Pty Ltd (CAN 000 100 096), 3M Company v. Phillip Brumby, Australian Securities and Investments Commission (ASIC), LEADR-auDRP06/07; Freelife International Holdings LLC, Freelife International Australia Pty Limited v. Wealth Creators Australia Ltd, Corey Allan Sievers, Linda May Barker, LEADR-auDRP04/08; and NFL Properties, Inc. et al. v. Rusty Rahe,WIPO Case No. D2000-0128. Although the issue of consolidation was not expressly discussed by any of the panels in those cases, the published decisions disclose that the co-complainants in those cases appeared to have a common legal interest in trademark(s) that was allegedly affected by the respondent's registration of the disputed domain name(s). Consolidation of multiple applicants for relief is permitted in court proceedings in Australia and other countries. For example, Order 6, rule 2 of the Rules of the Federal Court of Australia permits consolidation of applicants where the applicants' rights to relief (whether joint, several or alternative) arise out of the same transaction and where some common question of law or fact would arise if the applicants brought separate proceedings.
As the above precedents show, the most obvious case of multiple complainants having a common grievance against a single respondent is where the complainants have a common legal interest in the rights on which the complaint is based. A simple example of this is where the multiple complainants have a shared interest in a trademark such as may exist between a licensor and a licensee. Another example is where multiple complainants form part of a single entity such as where individual companies are part of a larger corporate group or joint venture. In this situation, it might be said that each company has a common legal interest in trademarks held collectively by or within such entity, such that it may be appropriate to entertain a complaint brought by that entity and its constituent members against a single respondent in respect of multiple domain names alleged to contain such marks in whole or part; See e.g. Media West-CPI, Inc., Media West-DMR, Inc., Media West-GMP, Inc., Media West-GSI, Inc., Media West-PNI, Inc., Media West-PNJ, Inc., Media West-SJC, Inc., Media West-NPP, Inc., Cape Publications, Inc., Des Moines Register and Tribune Co., Gannett Satellite Information Network, Inc., Multimedia Holdings Corp., Phoenix Newspapers, Inc., Gannett Co., Inc. v. Unasi, Inc.,WIPO Case No. D2005-1336. The above scenario could also conceivably include a scenario in which one individual rights holder specifically seeks and authorizes transfer of a disputed domain name to another. It may also be that where the common legal interest asserted is based on common membership of an established association or league (such as an author's guild, artists' collecting society or sporting association) in which individual members have rights authorized to be enforced by the association, both the association and the members asserting rights affected by specific domain name registration should have standing to appear as multiple complainants in a consolidated complaint against a single respondent. See e.g. NFL Properties, supra.
However, where the petitioning multiple complainants do not have a shared interest in the relevant trademark and do not exist within an overarching legal structure, but rather rely on an assertion of rights that is claimed by each as an individual legal entity on an individual basis only, it is unlikely that the complainants will be able to show they have a common legal interest that justifies their consolidation in a single complaint. In that case, the complainants would need to make a compelling case that the respondent has engaged in common conduct that has affected their individual rights in like fashion. Examples of this might include where a respondent has clearly targeted multiple rights holders, where the rights relied on and all of the domain names complained about involve certain obvious and specific commonalities, and where there appears to be a clear pattern to the registration and use of all disputed domain names.
The Panel considers that the burden for establishing such common conduct that would reasonably justify consolidation of multiple complainants in a single complaint falls on the complainants. The Panel notes that the Policy was designed to provide an expedient mechanism for resolving clear cases of cyber-squatting. While changing realities within the domain name system may suggest an increased need for consolidation, the onus of showing any claimed commonality in respondent conduct must necessarily fall on the complainants as the petitioning parties. In practical terms, this would usually require the complainants to show a nexus between, on the one hand, the complainants and their trademarks and, on the other hand, the conduct of the respondent. It would typically not be enough, for example, to point to no more than the fact that the asserted rights are all registered with the same authority or derived from the law of a single jurisdiction.
The justification for a principle of allowing multiple complainants to join in a single complaint where they have a truly common grievance against the respondent is that to do so is both equitable to the parties (in the sense of fair and just) and procedurally efficient (in the sense of fostering a sense of judicial economy). It is, generally, equitable to the complainants because their grievance is common to them; and it is, generally, equitable to the respondent because either the legal or factual basis of each complainant's grievance is common to the respondent. It is, generally, procedurally efficient because it allows a common grievance to be put by the complainants, replied to by the respondent, and decided by a panel in the context of a unitary administrative proceeding. Equity must however be the guiding conduit through which procedural efficiency flows.
It follows from the above that consolidation of multiple complainants in a single complaint should be permitted if the complainants have a truly common grievance against the respondent, subject to the general condition that it is equitable and procedurally efficient to do so.
This means that, in this Panel's view, in considering whether to allow consolidation, two questions arise:
(i) do the complainants have a truly common grievance against the respondent?; and
(ii) would it be equitable and procedurally efficient to permit consolidation of complainants? This question would typically involve asking the question whether there is any reason why it would not be equitable to permit consolidation?
From what has been said above, it will be obvious that the second question needs to be asked only if the first question is answered in the affirmative.
Thus, this Panel's view is that, in determining whether to allow consolidation of multiple complainants in a single complaint, a panel should proceed as follows having regard to all of the relevant circumstances. First, the panel should answer the question: do these complainants have a truly common grievance against the respondent? If the answer to that question is ‘no', consolidation should not be permitted. If the answer to that question is ‘yes', it is necessary to answer the second question: would it be equitable and procedurally efficient to permit consolidation of complainants? If the answer to the second question is ‘no', consolidation should not be permitted. If the answer to the second question is ‘yes', consolidation should be permitted.
If the panel's determination is to permit consolidation, the panel should proceed to a consideration of the merits of the case. However, if the panel's determination is to refuse consolidation, the complaint should be dismissed. The making of such a preliminary determination has certain analogous precedents in (and would, in practical terms, operate in a manner somewhat similar to) the process by which a refiling complainant's petition to consider a refiled complaint would usually be assessed. See e.g. Grove Broadcasting Co. Ltd v. Telesystems Communication Limited,WIPO Case No. D2000-0703 and Creo Products v. Website in Development,WIPO Case No. D2000-1490. A key difference from the refiling situation, however, is that in the case of a consolidation request that is refused, no previous decision as to the merits of the complaint will have been issued. It follows that in the case of a consolidation request that is dismissed for failing to satisfy either of the above two criteria, the dismissal of the complaint should not prevent the individual multiple complainants from filing, in their individual capacity, a complaint against the respondent in relation to any of the domain names (in respect of which an individual complainant asserts applicable rights under the Policy) that were the subject of the dismissed complaint. Such a complaint, if subsequently brought by an individual complainant, would however typically need to be filed in the form of a separate complaint (or complaints) on appropriate conditions. (iv) Specific principles
The Panel believes that the question of whether sufficient grounds exist for entertaining a consolidation of multiple complainants in a single complaint must be determined on a case-by-case basis. Nevertheless, as foreshadowed, it seems to this Panel that some principles about the determination of this issue can and should be stated, as follows.
First, the burden of establishing grounds for consolidation under the Policy rests on the filing complainants.
Second, the grounds that allegedly justify entertaining the requested consolidation must be clearly identified by the complainants in their pleadings or petition.
Third, that burden requires the complainants to prove a truly common grievance against the respondent, and to make a reasonable case that it would be equitable and procedurally efficient in the circumstances to permit the requested consolidation.
Fourth, in cases where complainants are unable to show a common legal interest (as discussed above), it is incumbent on them to make a compelling case establishing common conduct by the respondent that has affected their individual rights in common fashion (as further discussed below).
Fifth, the respondent should have a fair opportunity to reply to the complainants' petition regarding consolidation.
Sixth, the DRSP with which the complainants have filed their complaint has responsibility for determining if, prima facie, such complainants have pleaded grounds which might justify entertaining the complaint in the consolidated form filed.
Seventh, in making that determination the DRSP (or indeed any subsequently appointed panel, should it so choose) may take into consideration the following non-exclusive factors:
(i) whether the complainants have asserted a common grievance against the respondent, and any argument asserted by either party in relation to:
a the extent to which the complaint concerns domain names that appear to share readily identifiable commonalities;
b the extent to which any pattern of registration appears to underlie the complainants' asserted common grievance, which may include the period of time over which the concerned domain names have been registered;
c the extent to which the disputed domain names are used for the same or similar purpose;
d the nature of the rights relied upon including whether the complainants rely on a single or multiple source of applicable rights; and
e the extent to which the complainants' substantive arguments made under each of the three elements of the Policy appear to be common to the disputed domain names;
(ii) whether there is any apparent reason why it would not be equitable to permit consolidation of complainants;
(iii) any other relevant arguments raised in any request for, or objection to, a consolidation, and the scope of evidence relied on; and
(iv) the extent to which entertaining the petition for consolidation would be procedurally efficient. In this regard, the DRSP would typically need to be satisfied:
a that all complainants are represented by a single authorized representative for the purpose of the proceedings;
b that the complainants clearly stipulate (e.g. in a table or schedule) each disputed domain name, the individual complainant making a claim thereto, the right or rights relied upon by that complainant, the remedy sought in respect of the domain name, and the registrar with whom the domain name is registered;
c that in the particular case of complaints filed by related corporate entities relying on multiple trademark rights, concerning multiple domain names in respect of which transfer is sought to (or at the permissible instruction of) a single parent or umbrella company (which should itself be included among the complainants), the basis of the latter's legal right over each of the former, including enforcement rights in respect of marks held thereby, is clearly stipulated;
d that relevant filings, including any annexes, would not appear to be unreasonably voluminous including exceeding applicable limits in the Rules and Supplemental Rules; and
e that there is an applicable fee schedule covering the complaint as filed, or that an appropriate agreement has been reached as to an applicable fee arrangement with the DRSP reflecting the multiplicities of the case (both for a single member panel, and for a three-member panel if elected by either party).
Eighth, where the DRSP has reasonable doubt about whether or not the complainants have established a prima facie case for consolidation, the DRSP should in general err on the side of refusal of consolidation, subject to the Center's authority to seek further comments from the parties, if deemed to be appropriate.
Ninth, where the DRSP determines that, prima facie, the multiple complainants have pleaded grounds that might justify entertaining the complaint (and the other formal requirements of the Policy are satisfied), the complaint should be submitted to an administrative panel, for determination of whether the complaint in consolidated form should be entertained and, if so, for the further determination by that panel of the merits of the claim under the applicable Policy.
Tenth, irrespective of type (i.e. irrespective of whether the appointed panel is a single-member panel or three-member panel), the appointed panel shall first determine the question of whether the complaint in consolidated form should be entertained. If the answer is "yes", that panel should proceed to a determination of the merits of the claim in its entirety under the applicable Policy. If the answer is "no", the complaint in consolidated form should be dismissed, typically subject to relevant right-holding complainants having the right to file individual complaints against the respondent should they so wish. B. Applications of the principles of consolidation to this Complaint (i) Q1: Do the complainants have a common grievance against the respondent?
The Complainants in this case do not have a common legal interest that has been affected by the Respondent's conduct. The Complaint alleges that each Complainant has rights in a name (being a phoneword) to which one of the Respondent's registered domain names is identical or confusingly similar. However, each Complainant holds that right individually (i.e. in its own name), not jointly with any of the other Complainants. Moreover, there does not appear to be any overarching legal entity in which the Complainants' individual rights have been vested, or which could be said to have legal control over the Complainants and/or the enforcement of the individual rights relied on. Thus, it seems clear from the Complaint that there is no legal interest affected by the Respondent's conduct that is common to the Complainants.
The Complaint appears to allege that there is common conduct by the Respondent that affects the Complainants' legal interests. This conduct is said to consist of "the fact and circumstances of the Respondent's registration of other domain names" (being the various domain names the subject of the Complaint), because this "is relevant to establishing the requisite absence of a legitimate interest in the domain name, and the presence of bad faith". Put in its strongest plausible form, this allegation might be restated as: the Respondent has engaged in a series of conduct, namely the registration of domain names that share a common characteristic (they consist of "phonewords"), that affects a legal interest held by each Complainant. The question that needs to be answered by this Panel is whether this is common conduct by the Respondent that justifies consolidation of the Complainants in this Complaint. This is not an easy question to answer, and there are arguments both for and against a finding of common conduct against the Complainants.
Supporting an answer in favor of a finding of common conduct by the Respondent against the Complainants is the fact the 66 domain names the subject of the Complaint have an unusual common characteristic – they are phonewords. This appears to this Panel to be unusual form of domain name, and one that as far as this Panel is aware has been the subject of only a limited number of domain name disputes. The Panel has noted, for example, The Rockport Company, LLC v. Gerard A. Powell,WIPO Case No. D2000-0064 concerning the domain name , Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO Case No. D2005-0096 concerning the domain name and Fresh Intellectual Properties, Inc. v. Jeonggon Seo,WIPO Case No. D2005-0115 concerning the domain name . In each of these three cases the complainant appears to have relied on a registered trade or service mark to which the concerned domain name was alleged to be identical or confusingly similar. In the present case in relation to 64 of the 66 disputed domain names, the Complainants appear to rely entirely on an assertion of rights to a smartnumber that corresponds, in practical terms, to a phonename. The Complainants assert that, while in theory a smartnumber registration may be capable of resolving to multiple letter strings, as a practical matter such a number will generally only resolve to a single combination of letters of any commercial significance – and will have been selected for registration on that basis. Thus, the Complainants argue that their legal rights to a smartnumber amount to legal rights to the phoneword to which the number resolves. (In relation to the other two domain names in issue, the Complainants point to three trademark registrations, "1300 PHONENAMES", "1300 PHONENAMES KNOW THE NAME. KNOW THE NUMBER" and "1800 PHONENAMES KNOW THE NAME. KNOW THE NUMBER", which are said to add weight to the claim in relation the disputed domain names and .)
Supporting an argument against a finding of common conduct by the Respondent directed at the Complainants is the fact that the Respondent registered the domain names at many different times over a period spanning more than two years (from May 2006 to September 2008). Also, there appears to be no characteristic other than, as noted, that they contain phonewords that is common to the disputed domain names. The phonewords contained in the domain names range across a very broad spectrum of products and services: vehicle products ("cars", "caravan"), food products ("hampers", "seafood"), professional services ("accountant", "medical"), financial services ("lend", "credit"), construction services ("fencing", "paving"), and regional information services ("darwin", "queensland"), to name a few. Thus, the current record does not appear to disclose evidence of conduct by the Respondent directed to the Complainants as a particular group of phoneword registrants, as distinct from conduct directed to the Complainants as various individuals holding phoneword registrations. The Panel notes that a more conclusive record as to the Respondent's business activities (as these are said to relate to the Complainants as a particular group of phone word registrants) and the Respondent's wider domain name registration patterns could have assisted in the former regard.
In light of the above, this Panel doubts that the facts disclosed by the Complaint on the present record would amount to common conduct by the Respondent sufficient to justify the consolidation of the multiple Complainants in this case. However, given also the novelty of this case, this Panel finds it useful in any event to proceed to consider the second question: whether it would be equitable and procedurally efficient to permit consolidation here, and in particular whether there is any reason why it would not be equitable to permit consolidation in this case. (ii) Q2: Is there any reason it would not be equitable to permit consolidation in this case?
The Respondent vigorously contests the Complainants' entitlement to consolidate in this Complaint. The Respondent's argument appears to be one of principle: the auDRP does not allow consolidation of multiple complainants in this situation. It is the Respondent's view that consolidation should only be permitted if all the complainants have a "joint and eligible interest" in the domain names in dispute, such that they "have the requisite standing of eligibility for the transfer of the domain names" to them jointly. Where, as here, the complainants do not have such a joint interest, it "amounts to an abuse of process and is nothing more than an attempt to save on filing fees which will have the net effect of over burdening [sic] the panelist(s) so appointed", claims the Respondent.
It is notable that the Respondent does not make a case against consolidation based on prejudice that such consolidation may cause the Respondent. Rather, the Respondent is concerned about the Complainants "saving on filing fees" and "overburdening the panelist". This Panel does not share the Respondent's first concern of the Complainants saving on filing fees. In the Panel's view, that fact that the Complainants may save on filing fees if consolidation is permitted is not in itself a reason to refuse consolidation. If it is proper to permit consolidation, it should be permitted and any issue of insufficiency of the filing fees that are paid should be dealt with by the DRSP either in its fee schedule or through appropriate arrangements made with the parties and the panel on a case-by-case basis. It is notable in this regard that the Rules, paragraph 19(d), do contemplate exceptional circumstances in which the DRSP may need to request the payment of additional fees to be established in agreement with the parties and the panel, and cases of consolidation would in this Panel's view quite reasonably come within the ambit of such exceptional circumstances.
The Respondent's second concern of overburdening of the panel warrants closer consideration. In this Panel's opinion, the relevant concern of "overburdening" is not one of too much work per se, but one of too much work for efficient, effective and equitable resolution of the dispute to occur in the one proceeding. That is to say, the concern must be whether permitting consolidation of multiple complaints will, in any particular case, lead to such a multiplication of issues that the dispute resolution process will become inefficient, ineffective and impractical to administer, or otherwise inequitable.
There seems to be a real prospect of this occurring in this case, for the following reasons. First, the number of consolidated complainants (i.e., nine) is relatively large. There is likely to be a significant difference in practice between the consolidations of, say, two or three complainants as against, say, six or more complainants. Secondly, amongst other things, there is a strong contest between the Complainants and the Respondent over the challenging question of whether a phoneword registration constitutes a "name, trademark or service mark" for the purposes of the first requirement of the Policy, as set out in paragraph 4(a)(i) which is reflected in the fact that the Complainants and the Respondent filed substantial supplementary arguments on this issue prior to appointment of the Panel. Whether a legal right to a phoneword amounts to a legal right recognized by the Policy is a novel, difficult and largely untested issue.
Although the Panel has not come to a concluded view on this matter at this stage of proceedings, in any event, it has noted that the outcome of this issue might not necessarily be the same in respect of all the disputed domain names. This is because some of the phonewords on which the Complainants base a claim to a name, trademark or service mark have a fundamental characteristic not shared by all of them and hence the Complainants' assertion that a smartnumber registration amounts to a right recognised by the Policy may not apply with equal strength to all smartnumbers and their corresponding phonewords. This, in turn, means it is conceivable that different considerations will arise in respect of the claims based of some of the phonewords. It is, therefore, theoretically possible that the Respondent in this case might wish to make arguments that apply to only some of the complainants, or that the Panel might wish to seek supplementary submissions from only some of the Complainants. If consolidation of the multiple Complainants in this case is permitted, there is the potential for the proceeding to be embarrassed (in the sense of unduly encumbered or impeded). That would be neither procedurally efficient nor equitable. (iii) Conclusion on consolidation in this case
This Panel is satisfied that the Center correctly accepted the Complaint, having offered the Respondent an appropriate opportunity to comment and having made a prima facie determination that the Complainants had pleaded grounds that might justify entertaining the Complaint in the consolidated form filed, which therefore should be put to the Panel for determination. This Panel, having carefully examined the provided evidence of record, has concluded that the Complainants do not appear to have a common legal interest affected by the conduct of the Respondent, and that the Respondent does not appear to have engaged in common conduct against the Complainants in the sense articulated in this Decision. Thus, the Panel is inclined to the view that the Complainants do not have a truly common grievance against the Respondent that permits consolidation in this Complaint. Further, this Panel has concluded that in the circumstances it would not be procedurally efficient, and hence it would not be equitable, to permit consolidation in this case. Thus, the Panel determines that the consolidation of the Complainants is not permitted in this Complaint.
The Panel thereby notes that the issue of consolidation is relatively uncharted territory in this context, that there may well be further development of the considerations as presently expressed in this Decision, and that such further development would obviously need to take account of, and do justice to, changing realities within the broader domain name system, and the intent behind the Policy (and indeed other policies similar to the UDRP) which is to provide an effective means of addressing abusive domain name registration. C. Findings
This Panel decides that this Complaint consists of multiple complainants that should not, for the reasons discussed above, be permitted to be consolidated in a single complaint for the purpose of the present proceedings under the Policy. Such determination is entirely without prejudice to any finding that may be made by a subsequent panel in the event that one or more of the Complainants should choose to file a separate complaint (or complaints) on appropriate conditions under the Policy. 6. Decision
For the foregoing reasons, this Panel dismisses the Complaint. This dismissal is made subject to the right of (any or all of) the Complainants to file, in their individual capacity, should they wish to do so, a complaint against the Respondent in relation to any of the domain names (in respect of which such individual Complainant asserts applicable rights under the Policy) that are the subject of this Complaint.
Andrew Frederick Christie
Sole Panelist
Dated: March 6, 2009
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