The Complainant is Cash Converters Pty Ltd. of Perth, Western Australia, represented by Wrays, Australia.
The Respondent is Casshies Investments Pty Ltd. of Wodonga, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with AussieHQ Pty Ltd. 3. Procedural History
On October 21, 2014, the Complainant’s representative transmitted by email to the WIPO Arbitration and Mediation Center (the “Center”) the Complaint under cover of a letter stating, in part:
“We refer to the decision dated 6 May 2014 (Case No. DAU2013-0040) by the Administrative Panel represented by Desmond J Ryan AM. In this decision, the Administrative Panel provided an opportunity for the Complainant to re-file its complaint with relevant evidence regarding bad faith use of .”
On October 27, 2014, the Center advised the Complainant’s representative that it regarded the Complaint as a re-filed case and so it was inappropriate for the Center to accept it. Reasons (as detailed later) for that position were given.
On November 3, 2014, the Complainant’s representative replied (as detailed later) after which, on November 12, 2014, the Center accepted the re-filed Complaint and emailed the Complainant’s representative stating, relevantly:
“…the Center accepts the Complaint on grounds that, prima facie, you have pleaded grounds which may justify entertaining the Complaint as a Refiled Complaint. However, this preliminary acceptance of the Complaint by the Center is expressly subject to any determination that the independent Panel may make on the issue of refiling…”.
On November 12, 2014, the Center transmitted by email to AussieHQ Pty Ltd a request for registrar verification in connection with the disputed domain name. On November 17, 2014, AussieHQ Pty Ltd. transmitted by email to the Center a deeply confused response1 making it necessary for the Center to ask for clarification. Later, the Center received a 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 November 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. The Respondent did not file a formal Response. Communications were received from the Respondent on November 20, 2014 and December 1, 2014 (not bearing on this decision) which did not constitute a formal Response.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on December 18, 2014. 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 December 23, 2014 the Complainant requested suspension of the proceedings. The case was suspended until January 7, 2015. The Complainant made subsequent extension requests through to February 9, 2015. Nothing more was heard from the Complainant and so the Panel instructed the Center to advise the Complainant that in the absence of the advice that the matter had been resolved a decision would issue. In response, the Center was advised that the Complainant has failed to reach an accord with the Respondent. 4. Factual Background
The factual background is unchanged from that explained in Cash Converters Pty Ltd v. Casshies Investments Pty Ltd,WIPO Case No. DAU2013-0040 (May 6, 2014) (“WIPO Case No. DAU2013-0040”) and those findings are incorporated by reference herein. 5. Parties’ Contentions A. Complainant
The Complainant asserts rights in the CASHIES trade mark and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and/or used the disputed domain name in bad faith. B. Respondent
The Respondent did not submit a formal response to the Complaint. 6. Discussion A. “A Refiled Complaint”
In order to apply the Policy the Panel must first consider the issue of whether or not this is a “Refiled Complaint”, an expression not found in either the Policy or Rules but adopted by the Center and this Panel as meaning “one which, in practice, concerns the same parties and domain name that were the subject of a previous adjudication on the merits under the Uniform Policy” (per, Creo Products Inc. v. Website In Development,WIPO Case No. D2000-1490) (“Creo”).2
In Creo, the panelist went on to state that
“… there is nothing in the Uniform Policy or Uniform Rules that provides an answer to the question of whether, and if so, when, a Refiled Complaint may be entertained under the procedure for dispute resolution provided by the Uniform Policy. The issue should therefore be resolved by logic, by common sense and by analogy with general principles of law relating to re-litigation of cases.”
The general principles of (common) law at issue are res judicata and issue estoppel. Res judicata is the general description embracing the defences of (i) merger in judgment, (ii) cause of action estoppel, and (iii) issue estoppel.3 It serves the private interest and the public interest in the finality of litigation. In broad terms, a party seeking to raise this defence in civil litigation must establish that the former decision was (i) final, (ii) on the merits, (iii) determined the same question as that raised in the later litigation, (iv) the issue ruled upon was indispensable or fundamental to the ultimate decision, and (v) the parties to be bound were in controversy on the issue in question.
These broad principles have found their way into decisions under the UDRP. In Grove Broadcasting Co. Ltd v. Telesystems Communications Limited,WIPO Case No. D2000-0703 (“Grove”), the panelist stated that:
“It is not appropriate to refer to a particular legal system in order to resolve the present problem, i.e., whether an unsuccessful Complainant to this special procedure can file an identical Complaint once a first defended Complaint has been rejected. 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 and (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.”
The panel in Grove expressed its views bluntly in these terms:
“In a case where a party has had every opportunity to put forward its case, there is no suggestion that the Panel acted in disregard of principles of natural justice; there should not be another opportunity. Indeed, the Policy contemplates that the process should be speedy. There are stringent time limits. Panelists have to give reasoned decisions within tight timeframes. Parties are expected to ‘get it right’ the first time, …”
In addition, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition,4 (“WIPO Overview 2.0”) asks at paragraph 4.4: Under what circumstances can a refiled case be accepted? In answer the consensus viewpoint is that:
“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.” B. Asserted basis for the Refiled Complaint
The Complainant’s representative complied with the requirement to indicate the grounds allegedly justifying the refiling of the Complaint. As indicated, their October 21, 2014 cover letter stated that the purpose of the Refiled Complaint was to provide relevant evidence regarding bad faith use of the disputed domain name. Additionally, in their November 3, 2014 submission to the Center they stated that:
“... the Complainant respectfully contends that the prima facie grounds for re-filing are not required for WIPO to accept the re-filed complaint. Instead, based on the statement of the Panel, the Complainant is only required to provide ‘more relevant evidence as to whether or not the Disputed Domain Name is being used in bad faith’.
The Complainant asserts that in the re-filed complaint it has provided more relevant evidence as to whether is being used in bad faith, including evidence that:
a) the premises listed on the website that resolves to the domain name in dispute (sic) is trading as ‘CashSavers’ (not Casshies);
b) the website resolved to the domain name in dispute (sic) has remained static since at least 2008; and
c) the Complainant’s rights in Cashies date back to 1999 (before the registration of the domain by the Respondent).” C. Assessment of those assertions
The Panel has chosen to assess those matters listed above in reverse order.
a) There is potential link between the Respondent’s possible bad faith and the date when the Complainant’s rights in the relevant trade mark, CASHIES, came into existence.WIPO Case No. DAU2013-0040 recognized that the Complainant’s registered rights in CASHIES postdated the registration date of the disputed domain name but the panel had little to say of any unregistered trade mark rights in that term. Instead, the panel made the finding that:
“The Complainant did not register its CASHIES trademark until September 13, 2005 and, according to the Complainant’s evidence in the Oppositions, did not actively promote that mark until 2010. In other words, according to the evidence submitted by the Complainant, from 1984 until 2005 (or later) the Complainant was doing business as “Cash Converters” and not as “Cashies”; that is, the Complainant has not alleged any basis for common law or unregistered rights in the CASHIES mark on which it could be claimed that the Respondent’s interests were not legitimate, or could be otherwise considered as being in bad faith. Accordingly, there is no basis upon which it may be concluded that, as alleged by the Complainant, the Respondent registered the Disputed Domain Name in full knowledge of the Complainant’s rights or that they could have been discovered by trademark searches. Contrary to the Complainant’s assertion the creation of the Disputed Domain Name predates any demonstrated rights of the Complainant.”
There is no basis for this Panel to interfere with those findings. There is no new evidence of common law rights predating the registration date of the disputed domain name. What evidence there is existed and was before the panel inWIPO Case No. DAU2013-0040. All that is contained in the Refiled Complaint would entail me revisiting and substituting its own opinion of that same evidence. To the extent that the panel inWIPO Case No. DAU2013-0040did not explicitly discuss the Complainant’s declaratory statements regarding alleged use of the term CASHIES as a trade mark before the relevant date, this Panel expresses no surprise as the statements were of a generalized, unsupported nature. The very limited third party evidence postdated the relevant date and the references to decisions of the Australian national intellectual property office, IP Australia, which involved actions taken by the Complainant to enforce its trade mark rights against others hinged on the Complainant’s registered rights in CASHIES and did not involve the consideration of possible common law rights. It is entirely consistent with these observations that the panel inWIPO Case No. DAU2013-0040had nothing to say.
No further comment is required of this material which has (i) been considered already, and (ii) has no further influence of the assessment of possible Respondent’s bad faith behaviour.
b) The Complainant’s claim that the resolving website has remained unchanged since at least 2008 is supported in the Refiled Complaint by a screenshot which shows a website exactly as described by the panel inWIPO Case No. DAU2013-0040, being “a static image of the word ‘CASSHIES’ with the letters ‘SS’ rendered as dollar signs and includes the words ‘New Website Coming Soon!’ and ‘Casshies Wodonga: (02) 60244223’.” To that extent, there is nothing new in the Refiled Complaint.
In redacted form, the Refiled Complaint makes the following submissions which can be considered of relevance:
“To the best of the Complainant’s knowledge, the Respondent has never further developed and used the Domain Name for any purpose. The Respondent [a deregistered company] is no longer in existence … [but] the Domain registration has clearly been kept in force and the benefit of the Domain and goodwill in the CASHIES trade mark continues to flow through to any entity that is not the rightful recipient of the benefit of the goodwill. […] it appears that the name has been passively held at all relevant times, and the Domain Name will continue to be passively held, until the Domain Name registration period expires.”
None of those submission are new, or rather, given that this Panel is not privy to the actual complaint filed inWIPO Case No. DAU2013-0040, there is (i) no new factual information, and (ii) the submission appears to be rehearsed since the panel inWIPO Case No. DAU2013-0040 implicitly considered the claim of “passive holding” of the disputed domain name in bad faith and rejected it, stating that the facts did “not come within the rationale in Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003.”
As before, no further comment is required of this material which has (i) been considered already, and (ii) has no further influence of the assessment of possible bad faith behaviour.
c) The Refiled Complaint states that “[A] recent photograph taken on June 27, 2014 of the premises at 133 High Street, Wodonga […] demonstrates that the business out of these premises is trading as ‘CashSavers’.” Annexed to the Refiled Complaint is such a photograph. The Panel baulks before characterizing this photograph as “new” evidence. Although the photograph was taken after the decision inWIPO Case No. DAU2013-0040, it is impossible to know when the 133 High Street, Wodonga premises first bore the “CashSavers” signage as the Complainant has not addressed this point – which it should have known would bear on its case. No further information is given and so it is also impossible to assess whether, through normal diligence, that fact might not have been properly included in the complaint toWIPO Case No. DAU2013-0040. This leaves the Panel with the inference that its non-inclusion in the original complaint was an oversight, rather than it being “new evidence.” Moreover, even were this Panel to consider it now, it would have to measure the strength, in terms of possible bad faith, of the causal link between the use of the disputed domain name which resolves to a webpage showing neither the Complainant’s trade mark, nor the trading name “CashSavers”, nor the location of the “CashSavers” premises shown in the photograph.
Finally, the Complainant has repeatedly underpinned the Refiled Complaint by reference to the panel’s statement inWIPO Case No. DAU2013-0040that “its decision should be without prejudice to the Complainant’s right to refile the Complaint in the event that it is able to provide more relevant evidence as to whether or not the Disputed Domain Name is being used in bad faith.” Nevertheless, this Panel notes that immediately preceding that statement the panel wrote:
“… the business of the Respondent may legitimately be continuing at that [High Street, Wodonga] address, for example by assignment or devolution. Action to maintain the Disputed Domain Name and to continue its website use may not necessarily indicate use in bad faith. The evidence is not sufficient to enable the Panel to conclude, on the balance of probability, that the Disputed Domain Name is being used in bad faith.
The Panel further notes with some surprise that the Complainant has not sought to provide evidence of the current situation with respect to the Respondent’s business, particularly having regard to the fact that it carries on business in the same street in a small provincial city.
The Panel therefore declines to find, on the evidence before it, that the Disputed Domain Name is being used in bad faith.”
Within this larger context of the reasoning inWIPO Case No. DAU2013-0040, this Panel considers that the Refiled Complainant is essentially an iteration of the complaint filed inWIPO Case No. DAU2013-0040 and adjudicated upon, with the sole addition of a single photograph showing a business of unknown provenance, accompanied by no cogent submissions and certainly none rising to the expectations of the panel inWIPO Case No. DAU2013-0040.
This Panel gives no weight to this photograph and it has no further influence of the assessment of possible bad faith behaviour.
In Creo the panel wrote:
“It seems to this Administrative Panel that, in determining the circumstances in which Refiled Complaints should be entertained under the Uniform Policy, a distinction should be drawn between (i) Refiled Complaints that concern the act which formed the basis of the original complaint, and (ii) Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint.
In relation to Refiled Complaints that concern the acts which formed the basis of the original complaint, this Administrative Panel prefers the approach which was adopted inWIPO Case No. D2000-0703 [Grove]. That approach, which reflects the general principles of law relating to re-litigation of cases, is to make the acceptance of a Refiled Complaint exceptional.
The question of whether sufficient grounds exist for entertaining a Refiled Complaint, of either the first type or the second type, must be determined on a case-by-case basis. Nevertheless, it seems to this Administrative Panel that some general principles about the determination of this issue can and should be stated, as follows. First, the burden of establishing that the Refiled Complaint should be entertained under the Uniform Policy rests on the refiling complainant. Secondly, that burden is high. Thirdly, the grounds which allegedly justify entertaining the Refiled Complaint need to be clearly identified by the refiling complainant. Fourthly, the dispute resolution service provider with whom the Refiled Complaint has been filed has responsibility for determining if, prima facie, the refiling complainant has pleaded grounds which might justify entertaining the Refiled Complaint. Fifthly, where the dispute resolution service provider determines that, prima facie, the refiling complainant has pleaded grounds which might justify entertaining the Refiled Complaint (and that the other formal requirements of the Uniform Policy are satisfied), the Refiled Complaint should be submitted to an administrative panel, for determination of whether the Refiled Complaint should be entertained (and, if so, of the merits of the claim under the Uniform Policy).”
There was no allegation by the Complainant of serious misconduct or denial of natural justice in the deliberations under the previous complaint. A serious burden rests with the Complainant to show that the dispute should be revisited. The matter raised by the Refiled Complaint has either been considered already and/or has no influence of the assessment of possible Respondent’s bad faith behaviour. 7. Decision
For all the foregoing reasons, the Panel finds the Refiled Complaint inadmissible. Panel orders that the disputed domain name remain with the Respondent.
Debrett G. Lyons
Sole Panelist
Date: February 21, 2015
1 Stating that “we are the registrant” of the domain name and that “respondent is the reseller of the domain, whitedoggreenfrog”.
2 The Panel, noting the similarities between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and auDRP cites previous UDRP cases in this regard.
3 An issue estoppel prevents an issue litigated for one cause of action being re-litigated for another. In Blair v Curran [1939] HCA 23; (1939) 62 CLR 464, Dixon J. explained the distinction between res judicata and issue estoppel in the following terms:
A judicial determination directly involving an issue of fact or of law disposes once for all of the issue, so that it cannot afterwards be raised between the same parties or the privies. The estoppel covers only those matters which the prior judgment, decree or order necessarily established as the legal foundation or justification of its conclusion, whether that conclusion is that a money sum be recovered or that the doing of an act be commanded or be restrained or that rights be declared. The distinction between res judicata and issue estoppel is that in the first the very right or cause of action claimed or put in suit has in the former proceedings passed into judgment, so that it is merged and has no longer an independent existence, while in the second, for the purpose of some other claim or cause of action, a state of fact or law is alleged or denied the existence of which is a matter necessarily decided by the prior judgment, decreed or ordered.
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