1136
Nominet UK Dispute Resolution Service
DRS 01136
1 & 1 Internet AG -v- SSL
Decision of Independent Expert
1. Parties
Complainant: 1 & 1 Internet AG
Country: DE
Respondent: SSL
Country: Denmark
2. Disputed Domain Name
The domain name in dispute is < 1and1.co.uk >.
3. Procedural Background
On 25 July 2003, the Complaint was lodged with Nominet UK accordance with the Dispute Resolution Service Policy (hereinafter the “DRS Policy”) and hard copies of the Complaint were received in full on 28 July 2003.
On 31 July 2003 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure allowed the Respondent 15 working days within which to respond to the Complaint.
On 3 September 2003 as no Response had been received and as the Complainant had paid the required fees, Nominet UK proceeded to appoint an Expert to determine the dispute.
On 3 September 2003 Mr James Bridgeman was appointed as Expert having confirmed to Nominet UK that he knew of no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the Parties, which might appear to call into question his independence and/or impartiality.
On 19 September, 2003, having considered the file, the Expert sought further submissions from the Parties, relating to his jurisdiction and role and on the application of the principles of res judicata to disputes in the DRS.
On 1 October 2003 the Complainant submitted further submissions as requested. No submissions were received from the Respondent.
4. The Facts
The Complainant is a German company with a substantial business as a webhoster. The Complainant’s UK business is conducted through its wholly-owned subsidiary 1 & 1 Internet Limited, a company incorporated in March 2002. The Complainant has submitted printouts of extracts from the Complainant’s websites at www.oneandone.co.uk and www.1und1.de as an annex to the Complaint.
In 2002, the Complainant’s advertising expenditure was €21.2M and its UK subsidiary’s advertising expenditure was €2.1M. The Complainant has won numerous awards including "Best Consumer Web Host" and "Best Business Web Host" in the Future UK Internet Awards in both 2001 and 2002. The Complainant’s UK subsidiary has also been named “the fastest growing web hosting provider in the World”. In support of this assertion the Complainant has submitted a collection of press releases and articles posted on the Complainant’s websites.
The Respondent has not filed any Response in these proceedings. The information available is the basic name and address on the file and the further information submitted by the Complainant that is set out infra.
The Domain Name was registered on 23 November 1999. On 8 September 2000, Schlund and Partner AG, a subsidiary of the Complainant and domain name registrar, lodged a complaint with Nominet UK under its old DRS. The complaint failed.
On 12 June 2002, the Complainant’s UK subsidiary lodged a complaint with Nominet UK under the new Policy. This Complaint was dealt with in 1&1 Internet Limited v. SSL DRS 0442 and the complaint failed for the reasons set out in the expert’s decision of 29 July 2002.
5. The Parties’ Contentions
Complainants’s Submissions
The Complainant contends that it has rights in trademarks which are similar to the Domain Name within the meaning of paragraph 2(a)(i) of the Policy. The Complainant points to its trademark registrations and to the findings of the expert in DRS0442.
The Complainant also refers to the Appeal Panel’s comment in seiko-shop.co.uk that “the requirement to demonstrate 'rights' is not a particularly high threshold test” (DRS 00248, para 9).
Although the trademark registrations stem from applications post-dating the registration of the Domain Name, they merely reflect the Complainant’s pre-existing unregistered rights. In this regard the Complainant refers to documentation submitted as an annex to the Complaint comprising material posted on the Complainant’s main website prior to registration of the Domain Name. The Complainant contends that this material and other similar material must have been available to the Respondent who manifestly has Continental connections and an interest in internet matters. The Complainant also refers to documentation submitted as an annex comprising a whois search of the 1and1.com domain name, which was registered on 28 September 1997, initially connected to 1und1.de and now connected to oneandone.co.uk; and further documentation showing German trademark registrations dating from 1995 and 1996.
The Complainant submits that such pre-existing rights are clearly stronger than those demonstrated in DRS 00948.
In any event, paragraph 2 (a)(i) of the Policy does not call for rights predating registration of the Domain Name. The fact that rights exist is sufficient.
The Complainant further contends that the Domain Name is an abusive registration as defined in paragraph 1 of the Policy. The Complainant’s contentions on this topic fall under four of the heads illustrated in paragraph 3 of the Policy. Paragraph 3(1)A
The Complainant further contends that given:
i) the fame of the Complainant as a webhoster in June 1999
ii) the predilection of the Respondent to register famous names including the names of ISP’s whether accurately represented or mis-spelt ; and
iii) the fact that the Respondent manifestly has a significant interest in internet matters,
it is inconceivable that the Respondent did not have the Complainant in mind when registering the Domain Name.
Moreover the Complainant submits that “nobody goes to the expense of registering that number of domain names for no purpose.” The only sensible conclusion has to be that the Respondent registered them either with a view to selling them at a profit or using them or allowing others to use them for profit. Accordingly, the Complainant contends that the Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant at a profit.
The Complainant contends that connection of the Domain Name to the website of a competitor of the Complainant is inherently deceptive. 1&1, because of the ‘&’, is unregisterable (as such) as a domain name. 1and1 is an obvious alternative.
People aware of the Complainant would believe that the Complainant and UK2Net are in some way associated when the Domain Name is connected to UK2Net’s website. The Complainant has received email correspondence, copies of which have been submitted in an annex to the Complaint, which shows that at least one member of the public has been deceived into thinking that the Domain Name was connected to the Complainant’s website.
The Complainant contends that it is highly likely that numerous other instances of confusion have already occurred.
Communications with the Respondent at the address given do not reach the Respondent but are returned.
The Respondent’s precise identity is not known to the Complainant. The Respondent’s address, Vaerebrovej 98-5, 2860 Bagsvaerd, is not a valid address since 2860 is not the postcode for Bagsvaerd but for Søborg. However there is no street named Vaerebrovej in Søborg. The Complainant has attempted to deliver correspondence to the Respondent’s address but without success. The Complainant has submitted copies of the letter in question and confirmation from Deutsche Post AG that either the address given was unknown or perhaps more likely that the addressee was unknown at that address as an annex to the Complaint.
The Complainant recently investigated the premises at Vaerebrovej 98, 2880 Bagsvaerd, the address which corresponds most closely to the Respondent’s address. The Complainant has submitted copies of: i) A report from a German lawyer, Lorenz Kappei, who visited this address; ii) A schedule of persons living at this address; and iii) Photographs of the premises.
As the expert commented in the hostway.co.uk decision, the word “Respondent” as applied to SSL was “something of a misnomer as it has not responded to any correspondence from the Complainant or Nominet UK.” (DRS 00948, para 5) True contact details should enable Nominet UK and other interested parties to contact the registrant, failing which they are false. These are not true contact details which have not been kept up to date: the contact details were never true and no-one at the address given by the Respondent had the authority to do what the Respondent has done.
Finally, the Complainant observes that the examples in paragraph 3 of the Policy are illustrative, not exhaustive. The Complainant contends that if the expert is any doubt in the matter, notwithstanding the above, at the very least the Complainant has made out a prima facie case of abusive registration sufficient to call for an answer from the Respondent.
If the Respondent fails to respond or to respond satisfactorily the Complainant contends that on the facts the expert should infer that the Respondent has no good answer to the Complaint. The Complainant further contends that the fact that this Complaint may well not reach the Respondent should not deter the expert from coming to this conclusion. It would be a grotesque result if a Respondent could pray in aid the fact that it has rendered itself uncontactable.
The Complainant submits that since the decision in the earlier case DRS there have been the following developments:
i) The Complainant has obtained a CTM registration for its 1&1 logo, the primary element being “1&1” (CTM 1,877,521) and a UK registration for ONEANDONE (2,262,699). Details of these registrations have been submitted as an annex to the Complaint.
ii) The Complainant has now discovered that between June 1999 and January 2000 the Respondent registered over 100 domain names in the .co.uk sub domain, a very large number of which feature the names of celebrities (e.g. juliaroberts.co.uk), the names of ISP’s (eg. terranetworks.co.uk and hostway.co.uk) or misspellings of the foregoing (e.g. gwenythpaltrow.co.uk, llycos.co.uk, liecos.co.uk and kycos.co.uk). A schedule of a selection of names registered by SSL in the .co.uk sub domain which incorporate well-known marks and/or celebrities’ names is attached
iii) The Respondent was recently named in a complaint filed by Hostway Limited, an ISP, regarding the Respondent’s registration of hostway.co.uk. The expert’s decision held that the hostway.co.uk domain name, in the hands of the Respondent, amounted to an abusive registration. Noting the fact that the Respondent had registered hostway.co.uk “within 3 days of the date on which the Respondent registered the domain name 1and1.co.uk, which is the name of another internet hosting company”, the expert concluded that “the Respondent’s registration of domain names corresponding to the trading names of two unrelated internet hosting companies – hostway.co.uk and 1and1.co.uk – calls for an explanation” and that the Respondent had failed to provide such an explanation. (DRS 00948, page 5).
iv) The Domain Name has continued to be connected to the UK2Net website, UK2Net being a major competitor of the Complainant.
v) In autumn 2002, a third party visited the Respondent’s website on behalf of the Complainant and made an offer to purchase the Domain Name by following the prompts on the website. At the time of writing, the third party has not received a response from the Respondent or UK2Net, even though the Domain Name is still advertised for sale. The Complainant can only conclude that the offer to buy the Domain Name was rejected or ignored because the Respondent is renting the Domain Name to the Complainant’s competitor or otherwise diverting prospective clients away from the Complainant’s official website for profit.
vi) The Complainant’s fame under its 1&1 and ONEANDONE trademarks has continued to grow, as a visit to its websites at www.1und1.de and www.oneandone.co.uk will demonstrate.
In response to the Expert’s request for further submissions on the issues discussed below, the Complainant submitted inter alia, that the decision in DRS 0442 proceeded on the absence of any trade mark rights. Since the date of that decision the Complainant has obtained registered rights and has produced evidence of them to the Expert as well as evidence of the subsequent build up of goodwill and unregistered/common law trade mark rights. The finding of no trade mark rights did not disadvantage the Complainant on the first limb (existence of rights) because the expert in that case was prepared to proceed on the basis of contractual rights. It did however materially affect the expert's decision on the second limb (abusive registration), as the expert in that case stated:
"On this narrow basis, this Expert concludes that the Complaint meets the first requirement. However, the fact that this is the only basis on which the Complainant has established relevant rights has implications for the second requirement.
"Abusive Registration
""Abusive Registration" is defined in §1 of the Policy as a domain name which was registered or acquired or which has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights. The rights referred to are the rights which the Complainant has in a name or mark which is identical or similar to the disputed domain name. In this case, the only rights established by the Complaint are the Complainant's contractual rights in respect of the domain name "oneandone.co.uk" under Nominet UK's terms of registration. The Complainant contends that abusive registration is evidenced by the fact that the disputed domain name has been linked to the presence on the internet of another internet service provider (ISP), uk-2 Limited, and that this only ceased following correspondence with the Complainant's legal representatives. No details of the nature of the linkage are provided in the Complaint and copies of the correspondence are not attached, contrary to §3(x) of the Procedure. Since the Complainant has not proven that it has any trade mark rights or goodwill under a name similar to the disputed domain name in relation to internet services, it is not in a position to rely on any unfair advantage of or detriment to such rights by confusion with a competing supplier of such services. The Complainant is only entitled to rely on unfair advantage of or detriment to its contractual rights in respect of a similar domain name. However, the linkage of a domain name to an internet presence of another party does not of itself take unfair advantage of or cause unfair detriment to the contractual rights of the holder of a similar domain name. These contractual rights are unaffected by the mere linkage of a similar domain name to a different website."
The Complainant therefore submitted that the finding of no trade mark rights heavily underscored the expert's whole approach in DRS 0442. To the extent that the expert in that decision went on to make "what if" findings, they were obiter dicta and should be treated as such. In this complaint, however, the Complainant has produced the evidence of subsequent trade mark registrations and the build up of goodwill and common law rights since the date of that decision (29 July 2002).
The Complainant made reference to its CTM and UK trade mark applications for 1&1 and ONEANDONE respectively which matured to registration after the date of the decision in DRS 0442, namely on 3 October 2002 and 22 November 2002 (see documents under Tab 8 of the Complaint). The Complainant further stated that since the date of the decision in DRS 0442, it has made and continues to make considerable investments in its goodwill with an advertising spend of over €20M in 2002 and the industry awards it received in October 2002. The Complainant submits that all these facts indicate that after the date of the decision in DRS 0442 the Complainant had obtained registered trade mark rights and built up substantial goodwill under common law. Accordingly, the factual background, which the Respondent has not disputed, is completely and fundamentally different.
The Complainant submits that this should be treated as a completely new set of proceedings.
Respondent’s Submissions
There was no Response from the Respondent and the Respondent did not take the opportunity to file any further submissions on the issue of the Expert’s jurisdiction or role or on the subject of res judicata.
6. Discussion and Findings:
Admissibility of the Complaint
The Policy defines an “Expert” as “the expert(s) we appoint under paragraphs 8 or 18 of the Procedure and references to Expert where applicable also refer to the Experts appointed under paragraph 18 of the Procedure;”
Paragraph 8 of the Procedure does not give any guidance as to the Expert’s duties except insofar as what may be taken from paragraph 8(d) that states:
” d. Once we have appointed the Expert, we will notify the Parties of the name of the Expert appointed and the date by which, except in exceptional circumstances, the Expert will forward his or her Decision to us.”
Paragraph 18 of the Policy deals with the appointment of Experts to appeal panels.
Paragraph 12 of the Procedure deals with 12. General Powers of Nominet UK and the Expert and paragraph 12 (b) in particular provides that:
b. The Expert shall determine the admissibility, relevance, materiality and weight of the evidence.
Paragraph 16 of the Procedure provides inter alia as follows:
a. The Expert will decide a complaint on the basis of the Parties' submissions, the Policy and the Procedure…
d. If the Expert concludes that the dispute is not within the scope of paragraph 2 of the Policy, he or she shall state that this is the case. If, after considering the submissions, the Expert finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, the Expert shall state this finding in the Decision. If the Complainant is found on three separate occasions within a 2 year period to have brought a complaint in bad faith, Nominet UK will not accept any further complaints from that Complainant for a period of 2 years.
Paragraph 2 of the Policy provides that the Respondent must submit to proceedings under the Dispute Resolution Service in the circumstances set out therein. Paragraph 2 is silent as to the number of times on which the Respondent must submit to such proceedings.
This is the second occasion on which this Complainant has brought a complaint under the DRS against this Respondent in relation to this domain name.
Administrative Panelists under the UDRP have been faced with similar circumstances in a number of cases. Under the UDRP, the issue of res judicata was considered and certain principles proposed in two important decisions namely Grove Broadcasting Co. Ltd v. Telesystems Communications Limited (WIPO Case No. D2000-0703) [Hon. Sir Ian Barker QC, Presiding Panelist, Date: November 10, 2000] and Creo Products Inc. v. Website In Development (WIPO Case No. D2000-1490). [Andrew F. Christie, Sole Panelist,Dated: January 19, 2001]. The principles enunciated in these decisions have been followed by other panels such as in Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co., Abu Gazaleh Intellectual Property and Aldar Audit Bureau v. Fadi Mahassel (WIPO Case No. D2001-0907) [ William R. Cornish, Sole Panelist Dated: September 13, 2001] and Friends of Kathleen Kennedy Townsend v. B. G. Birt (WIPO Case No. D2002-0451) a split decision of a three member panel [David W. Plant Presiding Panelist, G. Gervaise Davis III Panelist, Richard Page, Dissenting Panelist. Dated: July 31, 2002]
In Grove Broadcasting Co. (WIPO Case D2000-0703) the administrative panellist noted that there is no procedure in the UDRP, or either the rules or the supplemental rules governing the reference, for either an appeal against a Panel’s decision or for a reconsideration of a Panel’s decision once it has been given on a Complaint. (It should be noted that the DRS Policy can be distinguished in this regard as there is provision for an appeal under the DRS process.)
He noted that under Clause 15(a) of the UDRP, an administrative panelist is required to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". He further noted there are no Rules relating to a "reapplication", "rehearing" or "reconsideration" of a complaint under the UDRP and concluded that it was therefore appropriate to consider by analogy well-understood rules and principles of law relating to the re-litigation of cases determined after a defended hearing.
In Grove Broadcasting Co. (WIPO Case D2000-0703) the administrative panellist went on to state "[i]t 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. Usually, before ordering a new trial, a Court would have to be satisfied that a miscarriage of justice had occurred." …
"In most common law jurisdictions with which this Panelist is familiar, the discovery of new evidence which, with the exercise of due diligence, would not have been reasonably available at the time of the original hearing can, in some circumstances provide a ground for a new trial. The principle as stated by the English Court of Appeal in Ladd v Marshall [1954] 3 All ER 745, 748 and the New Zealand Court of Appeal in Dragicevich v Martinovich [1969] NZLR 306, 308 is as follows:
‘… first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial: second, the evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive: third, the evidence must be such as is presumably to be believed, or in other words, it must be apparently credible, although it need not be incontrovertible.’"
In Creo Products Inc. v. Website In Development (WIPO Case No. D2000-1490). [Andrew F. Christie, Sole Panelist,Dated: January 19, 2001] the panellist undertook a full review of the legal principles applicable to cases under the UDRP where the administrative panel was asked to consider a second or subsequent complaint by the same complainant against the same respondent in relation to the same domain name. Mr Christie defined such complaints as “Refiled Complaints” and this Expert adopts this description for the purpose of the present decision.
In Creo Products the panellist considered whether the Complaint, being a Refiled Complaint, could be entertained under the UDRP. At the time of that decision the administrative panel was aware of only two other cases decided under the UDRP in relation to Refiled Complaints viz. Grove Broadcasting Co. Ltd. v Telesystems Communications Limited (WIPO Case D2000-0703) the associated previous complaint being WIPO Case D2000-0158), and eResolution Parker Hannifin Corporation v East Bay Website Company (Case AF-0587) the associated previous complaint being eResolution Case AF-0287.
He stated that he agreed with the general observations of the learned panelist Grove Broadcasting Co. (WIPO Case D2000-0703), to the effect that there is nothing in the UDRP 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 UDRP. He concluded that 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. He then went on to distinguish between Refiled Complaints that concern the act which formed the basis of the original complaint, and Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint:
“In WIPO Case D2000-0703, the complainant sought to introduce further evidence in relation to the acts pleaded in the previous complaint, in support of the allegation that the respondent had no right or legitimate interest in the domain name (this being the requirement of the Uniform Policy which the complainant had failed prove to the satisfaction of the panel in the previous complaint). In the eResolution Case AF-0587, in contrast, there seems to have been no new evidence sought to be admitted by the complainant. Rather, it appears from the decision that, at most, the complainant merely pleaded and argued the case differently from (and presumably better than) the way in which it was pleaded and argued originally. It also appears from the decision that the panelist in the subsequent case applied an interpretation of paragraph 4(c)(iii) of the Uniform Policy that was a different from (sic) (and more favorable to the complainant than) that which was applied by the panelist in the earlier case. In short, there is nothing in the decision in the later case which disavows the reader from concluding that the complainant was given, and successfully took advantage of, the opportunity to "have another bite of the cherry". This Administrative Panel considers that the approach adopted in eResolution Case AF-0587 is inappropriate.”
He went on to state:
“6.13. 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 in WIPO Case D2000-0703. 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. That is to say, a Refiled Complaint should only be accepted under the Uniform Policy in specific, relatively narrowly-defined, circumstances. The learned panelist in WIPO Case D2000-0703 identified four categories of circumstances in which a Refiled Complaint could be entertained under the Uniform Policy, as set out in the quotations contained in paragraph 6.8 above. It must be noted that the enumeration of these four categories is prefaced with the words "Such limited grounds are usually specified in Rules of Court and can include, for example …". It is clear that the learned panelist in that case was not purporting to produce an exhaustive list of all possible grounds on which a Refiled Complaint could be entertained under the Uniform Policy; rather, the specified grounds are examples of a more general principle. This Administrative Panel supports the view that the categories of grounds upon which a Refiled Complaint of the first type can be entertained under the Uniform Policy, whilst limited, are not closed.”
With regard to refilled complaints that relate to acts that occur subsequent to the first decision he proposed:
6.14. In relation to the second type of Refiled Complaint, namely those that concern acts which have occurred subsequent to the decision on the original complaint, it seems to this Administrative Panel that a different approach is warranted. With a Refiled Complaint of this type, the concept of res judicata does not arise. Because the subsequent complaint concerns acts which occurred after the original decision, it is not an action upon which an adjudication has already taken place; the subsequent complaint is truly a new action under the Uniform Policy. It follows that, subject to one exception, the merits of a Refiled Complaint of this type should be determined in the same manner as any new complaint under the Uniform Policy. The exception is that the acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based (even if those previous acts would likely be included as part of the facts and arguments asserted in the new complaint). That is to say, the acts on which the Refiled Complaint is based need to be such as to mean that the Refiled Complaint is truly a new action under the Uniform Policy, not just an application for readjudication of the previous complaint. (When properly applied, this exception would preclude an unsuccessful complainant from lodging, in the hope that the subsequent panel will come to a different conclusion on the facts, a Refiled Complaint based on subsequent acts that are either a repetition of or substantially the same as the acts on which the previous complaint was based.)”
This Expert is conscious that the DRS Policy is quite distinct from the UDRP and that references to the UDRP and decisions made in administrative proceedings under the UDRP should be considered with great caution in the context of disputes under the DRS Policy. Both policies however deal with the rights and obligations of parties in disputes relating to Internet domain names and there are many similarities between the two policies both in matters relating to procedure and to the substantive issues to be decided by the tribunals appointed under the respective procedures. Both policies are also silent on the subject of res judicata and refilled complaints.
In order to address these issues further submissions were sought from the parties on the following issues:
1. Does what Sir Ian Barker refers to in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited (WIPO Case No. D2000-0703) supra as the "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" apply to the DRS?
2. If the answer to 1 is "No", what criteria should be used to decide on the admissibility of complaints where the same complainant seeks to bring a second or subsequent complaint against the same, respondent in respect of the same domain name.
3. If the answer to 1 is "Yes", does the onus lie with the Respondent to raise the issue or res judicata or does the Expert have an obligation to raise the issue of res judicata in order to protect the integrity of the DRS Policy on public policy grounds?
4. If the answer to 3 is that the onus lies on the Respondent only to raise the issue of res judicata, does the Expert have such an obligation to raise the issue of res judicata in circumstances where the Respondent has filed no Response.
5. If the criteria set out in Creo Products (WIPO Case No. D2000-1490) were to be adopted should the present Complaint be categorised as one that is a new set of proceedings?
6. Should the fact that the Complainant failed to bring an appeal in DRS 0442 affect its rights in the present proceedings?
7. Is the Complainant not seeking to have a "second bite of the cherry" in the present proceedings having failed on the merits in DRS 0442?
8. Any other submissions the Parties deem relevant to the issue of res judicata and the admissibility of this Complaint.
The Respondent did not take the opportunity to make any further submissions.
On the broader issues of principle, the Claimant agreed 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" should apply to the DRS.
The Complainant was also of the view that the Expert has an obligation to raise the issue of res judicata in order to protect the integrity of the DRS Policy on public policy grounds.
On the issues more specific to the present case, the Complainant submitted that if the criteria set out in Creo Products (WIPO Case No. D2000-1490) were to be adopted should the present Complaint should be categorised as one that is a new set of proceedings.
The Complainant denied that it was seeking to have a second bite of the cherry and submitted that the fact that the Complainant failed to bring an appeal in DRS 0442 should not affect its rights in the present proceedings.
Paragraph 16 of the Procedure requires that the Expert determine whether the present Complaint comes within the scope of paragraph 2 of the Policy. It seems to this Expert that, in the absence of any guidance from the DRS Policy, the DRS Procedure or any decisions of Experts under the DRS Policy, the general principles proposed by the administrative panels in Grove Broadcasting Co. (WIPO Case D2000-0703) and Creo Products (WIPO Case No. D2000-1490) can be adopted to decide whether the present Complaint comes within the scope of paragraph 2 of the Policy that requires the Respondent to submit to these proceedings in the circumstances outlined.
In doing so, this Expert is affirmed by the fact that these decisions were given after full consideration of the issues involved by two eminent lawyers from the common law tradition and it is noted that the Complainant in its further submissions agrees with this approach also.
In applying these principles the following questions require consideration:
9. Are, the Complainant, the Respondent and the domain name in issue the same as in the earlier case?
10. Does the substance of the Complaint relate to acts that occurred prior to or subsequent to the earlier decision?
11. If the substance of the Complaint relates to acts that occurred prior to the earlier decision, is there any grounds for the rehearing or reconsideration? These grounds being limited and exceptional, examples being (a) serious misconduct on the part of the Expert, a witness or lawyer; (b) perjured evidence having been offered to the Expert; (c) the discovery of credible and material evidence which could not have been reasonably foreseen or known at the time of the earlier decision and (d) a breach of natural justice.
12. If the substance of the Complaint relates to acts that occurred subsequent to the earlier decision, acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based
The Complainant, the Respondent and the domain name are the same in the present case as in the earlier case.
The submissions of the Complainant relate mainly to acts on the part of the Respondent that occurred prior to the earlier decision viz. that the Complainant has now discovered that between June 1999 and January 2000 the Respondent registered over 100 domain names in the .co.uk sub domain. These clearly pre-date the proceedings in DRS 0442 that was initiated on 12 June 2002. Consequently, while this may be new evidence, it does not qualify as coming within the limited grounds upon which an application for re-consideration can be based because this information was available at the time of filing of the complaint in the earlier proceedings.
There is a number of matters that post-date the earlier decision that in the view of this Expert are not sufficiently significant as regards their relevance, materiality or weight to meet the criteria necessary to entitle the Complainant to have a reconsideration of its case viz. that the Respondent was recently named in a complaint filed by Hostway Limited, an ISP, regarding the Respondent’s registration of hostway.co.uk; that in the autumn 2002, a third party visited the Respondent’s website on behalf of the Complainant and made an offer to purchase the Domain Name and the third party has not received a response from the Respondent or UK2Net; and that the Complainant’s fame under its 1&1 and ONEANDONE trademarks has continued to grow.
There is one more significant issue that the domain name in dispute has continued to be connected to the UK2Net website, UK2Net being a major competitor of the Complainant. While this pre-dates the earlier complaint, it is a continuing set of circumstances the nature of which has arguably changed since the Complainant secured registered trademark rights in a mark similar to the said domain name.
The Complainant’s circumstances have strengthened since the earlier decision. The Complainant has obtained a CTM registration for its 1&1 logo, the primary element being “1&1” (CTM 1,877,521) and a UK registration for ONEANDONE (2,262,699). These registrations post-date the original complaint. In the original proceedings the Complainant failed to establish that it had any trademark rights or goodwill under a name similar to the disputed domain name in relation to internet services and was not in a position to rely on any unfair advantage of or detriment to such rights by confusion with a competing supplier of such services.
Based on the criteria set out in Creo Products (WIPO Case No. D2000-1490), is this therefore a new set of proceedings? Can a continuing act of the Respondent, where the Complainant has subsequently secured rights result in issues giving the right to issue a new set of proceedings? If so, the issue of res judicata does not arise. Given that the Complainant has made out a prima facie argument that this is a new set of proceedings, and since the Respondent has not put forward any contrary argument, this Expert is willing to give the Complainant the benefit of the doubt and to admit this Complaint for consideration.
It should be noted that this Expert is conscious that this is a decision based on the particular facts of this case and is further eager to emphasise that in proceeding to consider the substantive issues, this is in no way a review of the earlier decision.
Complainant’s Rights
The Complainant has obtained a CTM registration for its 1&1 logo, the primary element being “1&1” (CTM 1,877,521) and a UK registration for ONEANDONE (2,262,699). Therefore it follows that the complainant has rights in respect of a name or mark that is very similar to the domain name in dispute.
Abusive Registration
As to whether the domain name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS Policy defines “Abusive Registration” as:-
“a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainants’s Rights; or
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainants’s Rights.”
A non-exhaustive list of factors, which may be evidence that the domain name is an Abusive Registration is set out in paragraph 3.a of the DRS Policy inter alia as follows:
“ i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainants or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainants has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainants;”
Paragraph 4 of the DRS Policy sets out a non-exhaustive list of factors which may be taken as evidence that the domain name in dispute is not an Abusive Registration. These include inter alia at paragraphs 4.a.i.A and B that
”[b]efore being informed of the Complainant’s dispute,
A the Respondent has used or made demonstrable preparations to use the
Domain Name or a Domain Name which is similar to the Domain
Name in connection with a genuine offering of goods or services;
B been commonly known by the name or legitimately connected with a
mark which is identical or similar to the Domain Name;…”
There is no evidence that the Respondent has any defence to the allegation that the registration is abusive. From the evidence submitted by the Respondent, it would appear that there is a prima facie case that this registration has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights in that the Respondent has arranged for or permitted the domain name that is almost identical to the Complainants registered CTM trademark to be connected to the website of a major competitor of the Complainant that is also based in the European Union.
7. Decision
This Expert therefore directs that the Complainant has succeeded in its application and the domain name < 1and1.co.uk > should be transferred to the Complainant.
James Bridgeman
Date: 12 October 2003