WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Creo Products Inc. v. Website In Development
Case No. D2000-1490
1. The Parties
1.1. The complainant is Creo Products Inc., a Canadian corporation having a principal place of business in Burnaby, British Columbia, Canada ("Complainant").
1.2. The respondent is Website In Development, an entity the legal status of which is not clear, having an address in Las Vegas, Nevada, United States of America ("Respondent").
2. The Domain Name and Registrar
2.1. The domain name the subject of this Complaint is <creo-scitex.com>.
2.2. The registrar of this domain name is Network Solutions, Inc. of Herndon, Virginia, United States of America ("Registrar").
3. Procedural History
Issuance of a Previous Complaint
3.1. As noted in the Complaint, the Complainant issued a previous complaint against the Respondent under the Uniform Policy, in relation to the domain name the subject of this Complaint, on March 15, 2000. The decision of the administrative panel in relation to the previous complaint is contained in WIPO Case D2000-0160, made on May 1, 2000. The significance of this previous complaint is discussed below, in section 6 and in paragraphs 7.1-7.3.
Issuance of this Complaint
3.2. On October 28, 2000, the Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("Uniform Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy ("Uniform Rules"), both of which were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. The copy of the Complaint submitted by email was received on October 28, 2000 and the copy of the Complaint submitted by courier was received on October 30, 2000. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center to the Complainant, and copied to the Respondent, by email dated November 10, 2000.
Confirmation of Registration Details
3.3. A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by email on November 13, 2000. By email to the WIPO Center on the same day, the Registrar confirmed that it had received a copy of the Complaint from the Complainant; confirmed that it was the Registrar of the domain name the subject of this Complaint; confirmed that the current registrant of that domain name is the Respondent; identified the Administrative, Billing, Technical and Zone Contacts for the Registrant, and provided postal, telephone, facsimile and email contact details for the Respondent and the Contacts; confirmed that the Uniform Policy applies to the domain name the subject of this Complaint; and informed that the current status of that domain name is "hold".
Notification to Respondent
3.4. On November 16, 2000, by email, the WIPO Center sent to the Respondent, and copied to the Complainant, the following communication:
"We hereby acknowledge receipt of your three e-mail communications of October 28, 2000. Please be advised that as the ICANN Policy and Rules remain silent on the question of "refiling" of complaint, the determination on the admissibility of this complaint under the ICANN Policy will be in the discretion of the administrative panel to be appointed in due course."
On the same date, having determined that a prima facie case had been made to the effect that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the WIPO Center issued to the Respondent and its Technical and Zone Contact a Notification of Complaint and Commencement of Administrative Proceeding, by courier, facsimile and email to the addresses provided by the Registrar. Copies of this Notification of Complaint were sent by email to the Complainant, the Registrar and ICANN on that date. Records of the WIPO Center show that the Notification of Complaint and Commencement of Administrative Proceeding sent by courier was delivered to the address of the Respondent on November 20, 2000.
3.5. This Administrative Panel finds that the WIPO Center has discharged its responsibility under Rule 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.6. No formal Response was filed by the Respondent within the time specified in the Notification of Complaint and Commencement of Administrative Proceeding. Accordingly, on December 8, 2000, the WIPO Center sent by email a Notification of Respondent Default to the Respondent (at the email address from which the Respondent had communicated with the Complainant and the WIPO Center in this proceeding) and to the Complainant.
3.7. On October 28, 2000, being the day on which the Complaint was filed, the Administrative and Billing Contact for the Respondent sent three emails to the Complainant, each of which was copied to the WIPO Center. The substance of each of these emails is set out at paragraph 5.5 below.
Constitution of Administrative Panel
3.8. In accordance with the request in the Complaint, the WIPO Center proceeded to appoint a single Panelist, and invited Andrew F. Christie to so act. On December 14, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, stating that Dr. Christie had submitted a Statement of Acceptance and Declaration of Impartiality and Independence and had been appointed the sole Panelist in this case, and informing that absent exceptional circumstances a decision would be provided by this Administrative Panel by December 27, 2000. The case before this Administrative Panel was conducted in the English language, being the language of the registration agreement applicable to the domain name in issue.
3.9. On December 27, 2000, the WIPO Center by email informed the Complainant and the Respondent that, pursuant to Rule 15(b) of the Uniform Rules, this Administrative Panel had found that there existed an exceptional circumstance (being the preliminary issue, discussed below in section 6) such as to warrant extending the time by which a Decision will be rendered. This email further informed both parties that, taking into account the fact that the original date for a Decision fell in the middle of the Christmas and New Year holiday period, this Administrative Panel determined that the new date by which a Decision shall be rendered was January 12, 2001.
Submissions Subsequent to Filing of Response
3.10. On January 5, 2001 the Complainant sent directly to this Administrative Panel by email a supplementary submission (hereafter "Reply"). This unsolicited Reply was copied to both the Respondent and the WIPO Center.
3.11. The Uniform Policy and Uniform Rules do not provide for the parties to the dispute filing supplementary submissions subsequent to the Complaint and the Response. However, Rule 12 of the Uniform Rules does provide that:
"In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."
There can be no doubt that neither the Complainant nor the Respondent has a right to file supplementary submissions subsequent to the Complaint and the Response. Supplementary submissions can only be filed in response to a request for such from the Panel. Accordingly, this Administrative Panel is strongly of the opinion that parties must refrain from purporting to submit unsolicited supplementary submissions. It is, of course, for each Administrative Panel to determine whether or not to accept or request supplementary submissions, taking into account all the circumstances of the particular case.
3.12. This case does raise the important preliminary issue of when, if at all, a refiled complaint (as that term is defined in paragraph 6.2, below) may be entertained under the Uniform Policy. Although this Administrative Panel felt able to decide properly this case on the material contained in the Complaint and in the Informal Response, the Panel out of caution exercised its discretion to admit the Reply. Having decided to admit the Reply, the Panel felt that fairness required the Respondent be formally invited to submit observations on the Reply. Accordingly, by email of January 9, 2001, the WIPO Center informed both parties that this Administrative Panel had exercised its discretion to admit the Reply, and formally invited the Respondent to file with the WIPO Center any observations it wished to make on the issue addressed in the Reply by January 11, 2001. No such observations were submitted by the Respondent. By email dated January 12, 2001, the WIPO Center informed both parties the date by which a decision in this case would be issued had been extended by this Administrative Panel, to January 19, 2001.
4. Factual Background to this Complaint
Complainantís Activities and Trademarks
4.1. In a press release dated January 18, 2000, the Complainant formally announced the merger of certain of its business divisions with certain business divisions of its co-complainant in the previous complaint, Scitex Corporation Ltd. This merger had been the subject of unconfirmed reports in Israeli press on December 13, 1999, and December 23, 1999. Copies of those press reports were attached to the Complaint as Annex [H]. Pursuant to the business transaction effecting this merger, the Complainant acquired the digital preprint and print-on-demand businesses of Scitex Corporation Ltd. This transaction was finalized and became effective in April 2000.
4.2. As a part of the merger transaction, Scitex Corporation Ltd. granted an exclusive license to the Complainant to use the name and mark SCITEX and related marks in conjunction with the acquired businesses. A copy of the Trademark and Tradename License Agreement containing this license was attached to the Complaint as Annex [D]. Thus, insofar as the digital preprint and print-on-demand businesses are concerned, the Complainant has acquired all rights of Scitex Corporation Ltd. in the name and mark SCITEX. The Complainant also has obtained written approval from Scitex Corporation Ltd. to proceed with the claim which forms the basis of this Complaint. In section 1.4 of the license agreement, Scitex Corporation Ltd., as Licensor, acknowledges and consents to the use and registration by Creo Products Inc., as Licensee, of rights and domain names consisting of both the names and marks "Creo" and "Scitex". Thus, both Scitex Corporation Ltd. and the Complainant recognized that Complainant would be operating their combined businesses under a name and mark such as CREOSCITEX or CREO-SCITEX.
4.3. The Complainant has been using the name and mark CREO since at least as early as August 24, 1985. The Complainant's licensor, Scitex Corporation Ltd., has been using the name SCITEX since at least as early as 1971. The term CREOSCITEX was chosen by the Complainant as a logical and straightforward identification of the combined digital preprint and print-on-demand businesses of Creo Products Inc. and Scitex Corporation Ltd. Since April 4, 2000, the Complainant has operated these combined businesses in the form of "CreoScitex, a division of Creo Products Inc.", and has used the name and mark CREOSCITEX in connection with all of its products and services in the digital preprint and print-on-demand field.
4.4. The trademarks and service marks on which this Complaint is based are: CREO, SCITEX, CREOSCITEX and CREO-SCITEX. The Complainant has two US trademark registrations for the mark CREO. The first is registration no. 1,427,287, dated February 3, 1987, in respect of electro-optical scanners for detecting flaws in plastics, electro-optical data tape readers, and electro-optical non-contact film printers. The second is registration no. 1,764,083, dated April 13, 1993, in respect of direct write heads for exposing processless films using lasers; laser diode arrays; film recorders, image recorders, computer programs for diagnosing, operating and interfacing laser diode rays; film recorders image recorders, direct write heads, photo plotters and parts therefor; direct write plotters, graphic arts recorders. The Complainantís licensor, Scitex Corporation Ltd has US trademark registration no. 1,248,244, dated August 16, 1983, for the mark SCITEX, in relation to electronic color image processing apparatus. Copies of the Certificates of Registration for the U.S. Registrations identified above are attached to the Complaint as Annex [E]. Additionally, the Complainant is the owner of pending applications for the marks CREO, CREOSCITEX and CREO-SCITEX, partial details of which were provided in the Complaint. As well, the Complainant claims to be the owner or licensee of numerous registrations and applications filed world wide for the marks CREO and SCITEX, and other marks including such terms.
Respondentís Activities since Dismissal of the Previous Complaint
4.5. The Respondent registered the domain name on January 18, 2000. Following the May 1, 2000 decision of the administrative panel in the previous complaint, a series of email communications occurred between the parties. Copies of these communications are attached to the Complaint as Annex [I]. On May 10, 2000 the Complainantís representatives received from the Respondent an e-mail, the substantial contents of which are as follows:
"As you are now undoubtedly aware, WIPO has confirmed our right to own creo-scitex.com. We have decided not to release news of this victory via our account at PR Newswire at this time. However, we are very upset that you didnít try to call us before you filed such an action, which we knew all along we would prevail on due to the length we were able to prove we used this domain name, as coincidental as it appears, it was good enough for WIPO. Should you wish to buy the rights and title to our domain name, along with our retraction of any trademark applications we have pending, we will accept $20,000 USD for all rights to our name and the domain name."
In that email, the Respondent set a deadline of May 11, 2000 for acceptance of this offer. On that day, the Complainantís representatives sent an email to the Respondent, rejecting the offer, and alleging that any use of the domain name would constitute an infringement of the Complainantís trademark rights, which would result in immediate legal action.
4.6. On May 11, 2000, the Respondent sent a further email to the Complainantís representatives, as follows:
"As a final offer, I will accept $6,000 to close the matter. This is the amount it will cost me to retain an attorney should I need one, and I will also relinquish all title and rights to the creo-scitex.com domain name. This is as good as my settlement is going to get, so please take the matter to your client with seriousness."
4.7. Sometime thereafter, in May or June 2000, the Respondent set up a website at the address http://www.creo-scitex.com, whereby he offered the name for sale for US $2,000. A copy of the Respondent's website as it appeared on June 19, 2000, is attached to the Complaint as Annex [F]. The Respondent's website has not been active since at least August 26, 2000. A copy of the error message now appearing when one attempts to visit the Respondent's website is attached to the Complaint as Annex [G].
Complainantís Investigations since Dismissal of the Previous Complaint
4.8. In its purported official response to the previous complaint, the Respondent asserted that:
"The name <creo-scitex.com> is a domain name that is associated with our company, which has been for six years. Our post office box can confirm this to be so by phoning them at (702) 363-4433 who will confirm Creo-Scitex has been our company, and a company in existence for nearly 6 years that they have been collecting mail from us addressed to Creo-Scitex. Creo is our founders [sic] last name, and the company is Scitex & Company. Further, we are in the process of trademarking this very name."
Following the decision in the previous complaint, a member of the Complainantís representatives, Ms. Carr, conducted an investigation of these claims. The results of these investigations were detailed in a Declaration which was attached to the Complaint as Annex [M]. A summary of these results is as follows.
(i) A business listing for Website in Development could not be located with an Internet search, Dun & Bradstreet, Nevada Corporations, Clark County Business License or City of Las Vegas Business License. The address for Website in Development is the address for Mail For You, a mail box rental company. The telephone number given by Respondent for Website in Development is 213-202-1091, which in a reverse directory at http://www.anywho.com listed no business or person at that number. The area code is for a Los Angeles, California, number.
(ii) A reverse telephone directory search for the post office box given by Respondent reveals that the number and address belong to Mail For You, a mail box rental and receiving business, and Western Union, a mailbox rental and receiving business. The City of Las Vegas has a city business license in good standing for Mail For You, issued May 21, 1998. Clark County (where Las Vegas is located) does not have a license for Mail For You and Mail For You is not registered with the State of Nevada as a corporation.
(iii) Ms. Carr called Mail For You on May 4, 2000 at 2:05 p.m. Pacific Time and spoke with an individual who identified herself as "Tammy". Tammy confirmed that the business Ms. Carr called was known as "Mail For You", and stated that the address of Mail For You was 8635 W. Sahara, Las Vegas, Nevada. This is the same as that given by Respondent for his alleged "business". Tammy said she did not know of any company called "Scitex." When Ms. Carr asked whether they had "Creo-Scitex", Tammy immediately stated that "they didnít have it." Tammy confirmed that she knew the man named Brian Evans (who is the contact person for Website in Development), but stated she did not know whether his business was called "Creo-Scitex." Tammy agreed to "check the records" regarding "Creo-Scitex" and call Ms. Carr back. Later that day, instead of Tammy, Ms. Carr received a call from "Craig" from Mail For You. Craig would only identify himself as an "employee of Mail For You." When asked how long Mail For You had collected mail for "Creo-Scitex," Craig immediately responded "6 years". Strangely, Craig then asked if this was about "that domain name thing." Ms. Carr stated that she was simply following her instructions to call Mail For You and confirm that there is a mail box for the "Creo-Scitex" company and how long it has been established. Craig then volunteered that "Creo is a manís name", and asked if Ms. Carr was aware of that. Craig went on to say that Mail For You has paperwork from 1994 for "Creo-Scitex" and can produce that with any court order.
(iv) "Scitex & Company" was not found on an Internet business search or on Dun & Bradstreet, and is not listed with the Nevada Secretary of State. Clark County, Nevada has no record of them and neither does the City of Las Vegas. The same is true for "Creo-Scitex". A people search for "Creo" as a last name pulled up only one "J. Creo" in 141 results. It is not known if the "J" is for James. The address is 1915 Castle Bay Court, Oldsmar, FL 34677-2622. The telephone number is 813-855-4570. Local directory assistance has the number listed only with a "J" and not as James.
(v) As of May 3, 2000, there were no records with Thomson & Thomson (a well-regarded trademark search service) indicating a trademark application was filed for "Creo-Scitex". On May 5, 2000, a second search was conducted using Dialog (another search service) for (U.S.) federal and state marks. On the federal level, applications for the marks CREO-SCITEX and CREOSCITEX were filed by Complainant Creo Products Inc. The state level revealed only the marks SCITEX and Design, both of which are expired.
5. Partiesí Contentions
5.1. The Complainant contends that each of the three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the domain name the subject of this dispute.
5.2. In relation to element (i) of Paragraph 4(a) of the Uniform Policy, the Complainant contends that the domain name in issue is confusingly similar to Complainantís trade name CREOSCITEX and marks CREO, CREOSCITEX and SCITEX, and is identical to Complainantís mark CREO-SCITEX.
5.3. In relation to element (ii) of Paragraph 4(a) of the Uniform Policy, the Complaint contends that, to the best of its knowledge, the Respondent owns no valid intellectual property rights in the names or marks SCITEX, CREO, CREO-SCITEX or CREOSCITEX. The Respondent is not commonly known by the domain name at issue and has acquired no trademark or service mark rights in such name. The Respondent has made no use of or demonstrative preparations to use the domain name at issue in connection with a bona fide offering of goods or services. The Respondent is not making legitimate non-commercial or fair use of the domain name. The Respondent has no relationship to the Complainant and no authorization by the Complainant to use the name or mark. Accordingly, the Respondent has no rights or legitimate interests in the disputed domain name.
5.4. In relation to element (iii) of Paragraph 4(a) of the Uniform Policy, the Complainant contends that events and additional investigations that have taken place since the administrative panelís decision in the previous complaint disprove the assertions made by the Respondent therein, and bolster the Complainantís position regarding the Respondentís bad faith. The events occurring since the decision on the previous complaint, which the Complainant contends demonstrates the Respondentís bad faith, are set out in paragraphs 4.5-4.7 above. The investigations undertaken since the decision in the previous complaint, which the Complainant contends demonstrates the Respondentís bad faith, are set out in paragraph 4.8 above.
The Informal Response
5.5. As discussed in paragraph 3.7 above, immediately upon receipt of the Complaint the Respondent sent to the Complainant and the WIPO Center three emails, the contents of which were as follows.
"Dear WIPO: Please inform this repeat complaint filer that they cannot duplicate a complaint after you already decided we owned the domain name creo-scitex.com. Since our 6 year use of that name as our company name, we decidd (sic) to change our name, as we have done. You decided in your judgment that we owned the name fair and square. Therefore, as we have since changed our name, we have every right to sell our old domain name as you clearly agreed with us that we were entitled to the domain name, and could not have had any knowledge of the complaintant. Thank you, Entredomains formerly creo-scitex"
[Apparently addressed to the Complainant:] "As you know, <creo-scitex.com> is our name. WIPO already decided against you on your prior WIPO complaint, and as you know, there is no appealing their decision. Thank you"
[Apparently addressed to the WIPO Center:] "Please note the above case number you already reviewed in our favor. Complaintant is again attempting to reverse hijack our now former name because we decided to sell it, which it is our name to do so. In your case D2000-0160, you found in our favor, and ask that you reprimand the complaintant for attempting, again, to hijack our name. Thank you, Entredomains formerly Creo-scitex"
5.6. This Administrative Panel has decided to treat these emails as submissions in this Complaint. These submissions collectively are referred to herein as the "Informal Response". The substance of the Informal Response is that the Respondent has a reason as well as a legitimate entitlement to sell the domain name. The reason is that, following the decision in the previous complaint, the Respondent changed its name. The Respondentís entitlement to the domain name arises from the failure of the previous complaint brought against it by the Complainant. In addition, the Informal Reply denies the entitlement of the Complainant to bring a second complaint against it under the Uniform Policy. Finally, the Respondent alleges that the Complainant is, once again, engaging in reverse domain name highjacking.
5.7. The Complainantís Reply addresses the preliminary issue of whether the Complaint, being a refiled complaint, can be entertained under the Uniform Policy. The Complainant contends that nothing in the Uniform Policy or Uniform Rules precludes the entertaining of a refiled complaint. The Complainant is not attempting reverse domain name highjacking since it is not attempting to harass the Respondent, and there is no evidence of abuse of the administrative proceedings. Rather, the Complainant is bringing this second complaint because of additional facts which occurred after the decision was rendered on the previous complaint, which are strong evidence of the Respondentís bad faith registration and use of the offending domain name. The Complainant also contends this Administrative Panel should entertain the Complaint under the Uniform Policy because a court of competent jurisdiction would not be prevented from deciding the issues presented. There is no collateral estoppel or issue preclusion, because there has been "a change in the controlling facts between the first and second UDRP proceedings", as described above.
6. Discussion and Findings on Preliminary Issue of Applicability of Uniform Policy to a Refiled Complaint
What is a "Refiled Complaint"?
6.1. As noted in paragraph 3.1 above, the domain name the subject of this Complaint has been the subject of a previous complaint by the Complainant against the Respondent. It is not exceptional for there to exist a situation in which either the complainant, the respondent or the domain name of one complaint becomes the subject of a later complaint under the Uniform Policy. There are, for example, many decisions under the Uniform Policy resulting from separate complaints by the same complainant against the same respondent in relation to different domain names. There are also a small number of decisions under the Uniform Policy resulting from separate complaints in relation to the same domain name, either filed by a different complainant against the same respondent (for example, the pair of cases WIPO Case D2000-0026 and WIPO Case D2000-0734) or filed by the same complainant against a different respondent (for example, the pair of cases NAF Case FA0002000094311 and eResolution Case AF-0310).
6.2. It seems, however, a relatively exceptional situation for there to be a subsequent complaint under the Uniform Policy in relation to the same domain name, that is filed by the same complainant against the same respondent to a previous complaint Ė even where the substance of the subsequent complaint is not precisely the same as in the previous complaint. A subsequent complaint (whether or not precisely the same in substance) in relation to the same domain name, that is filed by the same complainant against the same respondent to a previous complaint is referred to herein as a "Refiled Complaint".
6.3. For the sake of clarity, the above definition has been couched in terms of a single-party complainant, a single-party respondent and a single domain name. This Administrative Panel recognizes that there may arise certain situations that are not strictly within the above definition, but which should also be considered Refiled Complaints. One such situation is where the previous complaint concerned multi-party complainants, multi-party respondents and/or multi-domain names. In such a situation, this Administrative Panel is of the opinion that any subsequent complaint brought by at least one of the previous complainants, against at least one of the previous respondents, in relation to at least one of the domain names subject of the previous complaint, is a "Refiled Complaint". In short, this Administrative Panel recognizes that the definition of a Refiled Complaint in paragraph 6.2 above needs to interpreted in a manner which gives effect to the principle that a "Refiled Complaint" is 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. The discussion which follows in this Decision in relation to a "Refiled Complaint" is directed towards that situation.
6.4. The Complaint in this case is a Refiled Complaint, in accordance with the above definition. As noted in paragraph 3.1 above, on March 15, 2000, the Complainant issued a previous complaint against the Respondent under the Uniform Policy, in relation to the domain name the subject of this Complaint (that is, <creo-scitex.com>). In fact, two complainants joined to bring the previous complaint Ė the Complainant in this case (Creo Products Inc.) and Scitex Corporation, of Herzlia, Israel. As explained above, however, the presence of an additional party (namely, Scitex Corporation) to that previous complaint does not alter the fact that this Complaint is a Refiled Complaint.
Previous Decisions on Refiled Complaints
6.5. The important preliminary issue which arises in this case is whether the Complaint, being a Refiled Complaint, can be entertained under the Uniform Policy. As at the time of this Decision, this Administrative Panel is aware of only two other cases decided under the Uniform Policy in relation to Refiled Complaints Ė WIPO Case D2000-0703 (Grove Broadcasting Co. Ltd. v Telesystems Communications Limited, the associated previous complaint being WIPO Case D2000-0158), and eResolution Case AF-0587 (Parker Hannifin Corporation v East Bay Website Company, the associated previous complaint being eResolution Case AF-0287).
6.6. In eResolution Case AF-0287, in which no response was filed, the administrative panel found that the domain name in issue was confusingly similar to the complainantís trademark registration, that the respondent had no right or legitimate interest in the domain name, and that the respondent registered the domain name in bad faith. However, the administrative panel in that case dismissed the complaint, on the ground that the complainant had not alleged "an actual bad faith use" of the domain name by the respondent. In the administrative panelís opinion, this meant that the complainant had not satisfied the requirement of paragraph 4(a)(iii) of the Uniform Policy, and thus could not prevail in the case. The final sentence of the decision states "Therefore, the Panel denies the complainantís request for transfer, but does so without prejudice to re-filing". Approximately two months after this decision, the complainant filed a second complaint against the respondent in relation to the same domain name, the decision on which is eResolution Case AF-0587. In that subsequent case, again in which no response was filed, the administrative panel (which was comprised of a different sole panelist) found that all three requirements of paragraph 4(a) of the Uniform Policy were satisfied, and ordered the transfer of the domain name to the complainant. The only reference in the subsequent decision to the fact that the complaint was a Refiled Complaint is contained in the following sentence: "The Panel notes a prior proceeding (AF00287) between the parties was denied without prejudice to re-assert this claim". The subsequent decision does not discuss the applicability of the Uniform Policy to a Refiled Complaint.
6.7. In WIPO Case D2000-0158, the administrative panel found that the domain name in issue was identical to the complainantís trademark registration, but that the complainant had "failed to satisfy its burden regarding paragraph 4(a)(ii) of the Policy" (being that the respondent has no right or legitimate interest in the domain name), and for that reason declined to order the remedy sought by the complainant. There was no express (or, for that matter, implicit) reference to the dismissal of the complaint being without prejudice to a refiling of the complaint. Approximately two months after this decision, the complainant filed a second complaint against the respondent in relation to the same domain name, the decision on which is WIPO Case D2000-0703. The administrative panel in the subsequent case was comprised of a different sole panelist, the Honorable Sir Ian Barker QC. The administrative panel sought and received additional submissions from both parties on the preliminary issue of whether the Uniform Policy is applicable to a Refiled Complaint. Much of the decision in the subsequent case is dedicated to a consideration of this preliminary issue.
6.8. The administrative panel in WIPO Case D2000-0703 begins by noting (paragraph 5 of the decision):
"There is no procedure in the Policy, the Rules or the Supplemental Rules for either an appeal against a Panelís decision or for a reconsideration of a Panelís decision once it has been given on a Complaint".
The administrative panel then proceeds to discuss the preliminary issue, as follows (paragraph 6 of the decision):
"Under Clause 15(a) of the Policy, a 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". In the present situation, there are no Rules relating to a "reapplication", "rehearing" or "reconsideration" of a Complaint. It is 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." Ö
"The only guidance in the Policy on the re-litigation of a Complaint, other than that given by Clause 15(a) above, is the provision that, if a party does not like the result of a Panel decision duly reached after consideration of the papers, then that party is at liberty to pursue any available remedies in a Court (see [paragraph] 4(k) [of the Uniform Policy] above)." Ö
"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. Usually, before ordering a new trial, a Court would have to be satisfied that a miscarriage of justice had occurred." Ö
"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  3 All ER 745, 748 and the New Zealand Court of Appeal in Dragicevich v Martinovich  NZLR 306, 308 is as follows:
ĎÖ 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.í"
"The incorporation of "further evidence" as a ground for a reconsideration of an ICANN administrative procedure needs careful thought. Certainly, there would have to be solid evidence in support of the three criteria mentioned in the quotation." Ö
"Breach of the rules of natural justice are unlikely to occur since Panelists receive together the submissions of both parties for consideration. There could be a denial of natural justice in an extreme case, but one is unlikely to occur given that one expects all ICANN providers to exercise quality control and provide Panelists with some adjudicatory or forensic experience and repute. A disgruntled party would have to offer strong proof in order to sustain a rehearing on this ground."
6.9. The administrative panel in WIPO Case D2000-0703 then proceeded to apply these principles to the facts of the case. It concluded that there was no ground on which the refiled complaint could be entertained under the Uniform Policy. There was no allegation by the complainant of serious misconduct on the part of the previous administrative panel or any of the parties in the previous complaint. Further, there was no allegation by the complainant of perjured evidence or the like in the previous complaint. The administrative panel in the subsequent decision found that there was no lack of natural justice in the deliberations under the previous complaint; in fact, it was found that the previous panelist "went out of his way to assist the Complainant when he made an order requesting further submissions, even going so far as to indicate the sort of evidence needed to prove the second criterion". The administrative panel in the refiled complaint concluded as follows (paragraph 6 of the decision):
"The additional evidence presented in this case in effect seeks to supply the information not supplied to the Panelist on the first occasion after his specific request. That is not justification for a new hearing in this case. 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, because there is not necessarily even a right of reply, although the learned Panelist in case D2000-0158 called for further submissions, which he was not required to do." Ö
"The only possible ground for the Complainant in this case is the one based on the discovery of fresh evidence. Whilst the second and third criteria mentioned in the English decision quoted on page 9 may possibly have been met, there is just no evidence that this evidence could not have been obtained with reasonable diligence at the time of filing the first Complaint. The Complainant is seeking an indulgence and it should therefore have provided some proof to satisfy this criterion." Ö
"Applying the test for a retrial on the ground of new evidence having been discovered, the Panel holds that there has been no attempt to satisfy the requirement that the evidence could not have been obtained with due diligence at the time when the first Complaint was filed. The Complainant, having elected to initiate the proceeding without proper documentation or proof, with no certainty of obtaining the indulgence given to it by the Panelist in the first case (D2000-0158), has to take the consequences."
The Applicability of the Uniform Policy to Refiled Complaints
6.10. This Administrative Panel agrees with the general observations of the learned panelist in WIPO Case D2000-0703, to the effect 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.
6.11. Logic shows that there are three possible approaches to dealing with Refiled Complaints under the Uniform Policy Ė (i) they could be permitted without limitation, (ii) they could be prohibited without exception, or (iii) they could be permitted in limited circumstances only. Common sense shows the advantages and disadvantages of each of these approaches. The advantage of permitting Refiled Complaints without limitation is that it allows complainants to seek re-adjudication of their claims where justice might not have been done in the initial decision Ė such as, for example, where a procedural error occurred during determination of the complaint, or where facts have come to light after the decision which, if known at the time of the decision, would have enabled the complaint to prevail under the Uniform Policy. The disadvantage is that successful respondents are not provided with any certainty that the unsuccessful complainant will not continually refile the complaint, even where there is no new evidence, in the hope of finding a different panelist more sympathetic to the original evidence. The advantage of prohibiting without exception Refiled Complaints is that there is finality to the resolution of the dispute under the Uniform Policy, which in turn provides certainty to successful respondents. The disadvantage is that unsuccessful complainants are precluded from redressing any injustice that occurred in the initial decision. The advantage of permitting Refiled Complaints in limited circumstances only is that the advantages of the first two approaches largely are obtained without most of their disadvantages. In particular, allowing Refiled Complaints in limited circumstances only has the advantage of allowing for unsuccessful complainants to address injustice where appropriate, whilst providing a reasonable degree of protection to successful respondents against unsuccessful complainants opportunistically seeking readjudication of the dispute without justification. Common sense shows, therefore, that Refiled Complaints should be permitted, but in limited circumstances only. The key task that follows is to determine what should be those circumstances.
6.12. 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. WIPO Case D2000-0703 and eResolution Case AF-0587 are Refiled Complaints of the first type. That is to say, the complainants in both these Refiled Complaints founded their action on those very activities of the respondent which gave rise to the original complaint. In neither case did the complainant rely on any activities of the respondent which occurred subsequent to 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 (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.
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 Ö". 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.
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.)
6.15. In relation to a Refiled Complaint that is truly a new action under the Uniform Policy, the administrative panel is undertaking a consideration of the merits of the case de novo. It follows that, unless agreed otherwise by the parties, the administrative panel considering the Refiled Complaint cannot rely on the findings of fact, or on the conclusions on the application of the Uniform Policy to the found facts, reached by the administrative panel on the previous complaint. To succeed, the Refiled Complaint must independently establish to the satisfaction of the subsequent administrative panel each of the three requirements of paragraph 4(a) of the Uniform Policy. Given the nature of this type of Refiled Complaint, it may be difficult for the complainant to satisfy the three requirements of paragraph 4(a) of the Uniform Policy. But if such a Refiled Complaint does satisfy those three requirements, then the complainant should not be refused a remedy merely because the respondent and the domain name in issue are the same as in some previous complaint that was brought by the complainant in relation to different acts by the respondent. This Administrative Panel believes that this approach to the issue of a Refiled Complaint of the second type reflects the general principles of the law in relation to re-litigation of cases.
Determining the Admissibility of a Refiled Complaint
6.16. 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).
The Practice of Dismissing a Complaint Without Prejudice to its Refiling
6.17. Although not relevant to the facts in this case, this Administrative Panel offers the following observations on the practice, adopted by some panelists, of expressly stating that a complaint is dismissed "without prejudice" to it being refiled. It is noted that eResolution Case AF-0587 is a case of this type. In this Administrative Panelís opinion, such a practice is not desirable, and should be avoided wherever possible. As eResolution Case AF-0587 illustrates, dismissing a case without prejudice to its refiling provides no finality to the dispute, and thus no certainty whatsoever to the successful respondent. In theory at least, a complaint dismissed in this way could be refiled at any later time, without the need for the complainant to show new grounds of action or even new evidence in relation to the previous grounds of action. In this situation, the successful respondent is left without protection against opportunistic and unmeritorious refiling, from a complainant hoping to obtain a more sympathetic administrative panel the second time around.
6.18. There may be situations in which an administrative panel considers that the complainant has not proved that the complaint satisfies all the requirements of the Uniform Policy, but that it is highly likely the complainant could do so upon the submission of further arguments and/or evidence. In this situation, it appears to this Administrative Panel that, rather than dismissing the complaint without prejudice, the better approach is to utilize the provisions of Rule 12 of the Uniform Rules, and request further statements and/or documents from either or both of the parties. If, after being given this opportunity, the complainant still is unable to satisfy the panel that the complaint meets all the requirements of the Uniform Policy, then the complaint must be dismissed. Such a dismissal must be seen as being with prejudice to the refiling of the complaint. The admissibility of any Refiled Complaint brought by the unsuccessful complainant would then be determined in accordance with the principles discussed above.
7. Discussion and Findings on the Merits of this Complaint
The Admissibility of this Complaint
7.1. This Complaint is based both on new evidence in relation to the acts which formed the basis of the previous complaint between the Complainant and the Respondent (hereafter "Previous Complaint"), and on acts which have occurred subsequent to the decision on the Previous Complaint. The new evidence in relation to the acts which formed the basis of the Previous Complaint is that resulting from the investigations of one of the Complainantís representatives, Ms. Carr. The acts which have occurred subsequent to the decision on the Previous Complaint are the Respondentís two email offers to sell the domain name to the Complainant, and the Respondentís website offer to sell the domain name to anyone.
7.2. This Administrative Panel concluded in paragraph 6.14, above, that a Refiled Complaint concerning acts which have occurred subsequent to the decision on the previous complaint is one which should be entertained under the Uniform Policy, so long as the subsequent acts are not in substance the same as the acts on which the previous complaint was based. A reading of the panelistís decision on the Previous Complaint (WIPO Case D2000-0160) discloses that the claim of bad faith registration and use in the Previous Complaint was based on "circumstantial evidence of a chronology of events" (paragraph 6.5 of the decision), being the registration of the domain name on the day of the public announcement of the merger of the Complainant and Scitex Corporation Ltd. It appears that, at the time of the Previous Complaint, the Respondent had undertaken no activities in relation to the domain name. The subsequent acts on which this Complaint is based Ė namely, the Respondentís offers to sell the domain name - are not in substance the same as the acts on which the Previous Complaint was based. Accordingly, this Administrative Panel finds that the part of this Complaint which concerns the Respondentís offers to sell the domain name is admissible under the Uniform Policy. The merits of this part of the Complaint are considered below.
7.3. This Administrative Panel concluded in paragraph 6.13, above, that a Refiled Complaint concerning acts which formed the basis of the previous complaint is one which should be entertained under the Uniform Policy in specific, relatively narrowly-defined, circumstances. (These circumstances include, but are not limited to, serious misconduct on the part of a panelist, party or legal representative of a party to the complaint; perjured or fraudulent evidence having been submitted to the administrative panel deciding the previous complaint; the discovery of credible and material evidence which could not have been reasonably foreseen or known at the time of the previous complaint; and a breach of natural justice occurring in the previous complaint). Because this Administrative Panel finds that the Complainant has succeed in that part of this Complaint concerning the Respondentís offers to sell the domain name, it is not necessary for this Administrative Panel to determine whether there exists circumstances which permit the part of this Complaint concerning the new evidence to be entertained under the Uniform Policy. Accordingly, this Administrative Panel makes no finding on the issue of whether the part of this Complaint concerning new evidence is admissible under the Uniform Policy.
Domain Name Identical or Confusingly Similar to Complainantís Marks
7.4. The relevant part of the domain name the subject of this Complaint is "creo-scitex". By virtue of both its entitlement under the trademark licence from Scitex Corporation Ltd. and its use of the mark CREOSCITEX in connection with its products and services in the digital preprint and print-on-demand field, the Complainant has established to the satisfaction of this Administrative Panel that it has rights in the unregistered mark CREOSCITEX. Thus, this Administrative Panel finds that the Complainant has rights in a trademark or service mark to which the Uniform Policy applies. This Administrative Panel also finds that the domain name the subject of this complaint, <creo-scitex.com>, is confusingly similar to that mark. (It is noted that the administrative panel in its decision on the Previous Complaint reached a similar conclusion on this issue.)
Respondentís Rights or Legitimate Interests in the Domain Name
7.5. The Respondent, in its Informal Response, repeated the claim made in the Previous Complaint to the effect that it had been using the name "Creo-Scitex" as its company name for six years. As in the Previous Complaint, the Respondent did not provide any evidence in support of that claim. If the Respondent had in fact been using the name as its company name for six years, it would be very easy for it to provide evidence of this fact. The Respondentís failure to provide such evidence is strongly supportive of the Complainantís contention that this claim is false. It would be an incredible coincidence for the Respondent to have a company name that is a combination of the trademark of the Complainant and the trademark of the Complainantís merger partner. In light of the lack of any evidence supporting the Respondentís claim, this Administrative Panel concludes that there is no coincidence; rather the Respondent has not been using the name "Creo-Scitex" as its business name. Accordingly, this Administrative Panel finds that the Respondent has no right or legitimate interest in the domain name "creo-scitex". (It is noted that the administrative panel in its decision on the Previous Complaint reached a similar conclusion on this issue.)
Domain Name Registered and Used in Bad Faith
7.6. Since registration of the domain name, the only activities undertaken by the Respondent in relation to it are the offers for sale described in paragraphs 4.5-4.7 above. Two of these offers for sale were made to the Complainant. Both of those offers were for large amounts - US $20,000 and US $6,000. Paragraph 4(b)(i) of the Uniform Policy states that evidence of the registration and use of the domain name in bad faith is provided by circumstances indicating that the respondent registered the domain name primarily for the purpose of selling it to the complainant for a sum in excess of its out-of-pocket expenses in registering the domain name. The sums for which the Respondent offered to sell the domain name to the Complainant are clearly amounts in excess of the Respondentís out-of-pocket expenses in registering the domain name.
7.7 These offers by the Respondent to sell the domain name to the Complainant for a sum in excess of the Respondentís out-of-pocket expenses in registering the domain name are not, of themselves, evidence of bad faith registration and use of the domain name. For circumstances to constitute evidence of bad faith registration and use under Paragraph 4(b)(i) of the Uniform Policy, those circumstances must be such as to indicate that selling the domain name to the Complainant for an excessive sum was the Respondentís primary purpose in registering the domain name. This requirement of Paragraph 4(b)(i) has particular significance in cases, such as this one, which are Refiled Complainants concerning acts that have occurred subsequent to the decision on the previous complaint. This is because a respondent, having succeeded in a complaint brought against it under the Uniform Policy, might well conclude that an economically rational way to deal with the disputed domain name is to offer to sell it to the unsuccessful complainant. Such an offer for sale, even if for a large amount, is not of itself evidence that the respondent in fact registered and is using the domain name in bad faith; rather, it might merely be evidence that the respondent is willing to allocate the domain name to another entity which values it more highly. For a post-complaint offer for sale to be evidence of bad faith registration and use of the domain name, all the circumstances of the respondentís activities must be such as to indicate that sale to the complainant for a sum in excess of out-of-pocket expenses was the primary purpose of the respondentís registration of the domain name.
7.8. The question that arises in this case is whether all the circumstances of the Respondentís activities indicate that sale of the domain name <creo-scitex.com> to the Complainant for a sum in excess of out-of-pocket expenses was the Respondentís primary purpose in registering that domain name. This Administrative Panel concludes that the circumstances do so indicate, for the following reasons. First, no other purpose for registering the domain name has been established by the Respondent. As stated above, the Respondentís claim to having used "Creo-Scitex" as its business name for six years is unsubstantiated by evidence, and simply unbelievable. Secondly, the date of the Respondentís registration of the domain name is the date of the public announcement of the Complainantís merger with Scitex Corporation Ltd. This coincidence of dates is most likely explained by the fact, alleged by the Complainant, that the Respondent opportunistically registered the domain name on becoming aware of the merger, with a view to selling it to the Complainant. Thirdly, the only use which the Respondent has made of the domain name is the offers for sale which form the basis of this part of this Complaint. Fourthly, the Respondentís explanation for wanting to sell the domain names, following its success in the previous complaint, is not credible. Although alleging to have had "Creo-Scitex" as its business name for six years, the Respondent now claims to have changed its name. As with the claim to having used "Creo-Scitex" as its business name, no evidence of the change of business name was provided. Indeed, at no time has the Respondent provided any evidence of the existence of this alleged business. When all these factors are considered, this Administrative Panel has no hesitation in concluding that the primary purpose of the Respondent in registering the domain name was to sell it to the Complainant for a sum in excess of its out-of-pocket expenses in registering it. This Administrative Panel accordingly finds, pursuant to Paragraph 4(b)(i) of the Uniform Policy, that the Respondent registered and is using the domain name in bad faith, in the sense in which that concept is used in Paragraph 4(a)(iii) of the Uniform Policy.
8.1. This Administrative Panel decides that this Complaint is admissible under the Uniform Policy, and that the Complainant has proven each of the three elements in Paragraph 4(a) of the Uniform Policy in relation to the domain name the subject of this Complaint.
8.2. Pursuant to Paragraph 4(i) of the Uniform Policy and Paragraph 15 of the Uniform Rules, and in accordance with the request of the Complainant contained in paragraph 13 of the Complaint, this Administrative Panel requires that the Registrar, Network Solutions, Inc., transfer to the Complainant, Creo Products Inc., the domain name <creo-scitex.com>.
Andrew F. Christie
Dated: January 19, 2001