WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Furrytails Limited v. Andrew Mitchell d/b/a Oxford Die-Cast
Case No. D2001-0857
1. The Parties
1.1 The Complainant is Furrytails Limited of First Floor, Standard House, 26-28 Standard Road, Park Royal, London, NW10 6EU, United Kingdom.
1.2 The Respondent is Andrew Mitchell d/b/a Oxford Die-Cast, PO Box 54406, Atlanta, Georgia, 30308, United States of America.
2. Domain Name and Registrar
2.1 The domain name upon which this complaint is based is <furrytails.com>. The registrar of the domain name as at the date of the Complaint is Network Solutions Inc ("NSI").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on July 3, 2001, and in hard copy by courier on July 11, 2001. The cover letter to the Complaint stated that the fees for a three member panel, as requested in the Complaint, were to be made by credit card payment. The Complaint stated that a copy of the Complaint was sent to the Respondent by fax, courier and first class post (including all Annexes) and by email (not including annexes), and that a copy had been sent to Network Solutions Inc. by first class post.
3.3 Upon receipt of the email copy of the Complaint, the Center sent the Complainant an "Acknowledgment of Receipt of Complaint" on July 11, 2001, by email, with a copy being sent to the Respondent by post/courier, facsimile and email.
3.4 The Center sent a Request for Registrar Verification to NSI on July 12, 2001, by email. NSI responded to the Center's request by email on July 17, verifying (1) Network Solutions was in receipt of the Complaint, (2) that NSI was the Registrar for the domain name in dispute, (3) that the Respondent was the current registrant of the domain name in dispute, (4) the Respondentís contact details, (5) that Network Solutionsí 4.0 Service Agreement was in effect in relation to the domain name, and (6) that <furrytails.com> had an Ďactiveí status.
3.5 The Panel notes that although the domain name in dispute was registered on November 30, 1998, long before ICANN adopted the Policy, for the reasons outlined in Part IV of the Complaint this dispute is notionally within the jurisdiction of the Policy.
3.6 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on July 17, 2001, to the Respondent by post/courier, facsimile and email, and to the Complainant by email.
3.7 The Center received the Response from the Respondent on August 5, 2001. The Center sent an Acknowledgment of Receipt (Response) to both the Respondent and Complainant on August 6, 2001, by email.
3.8 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Respondent and the Complainant on August 22, 2001, via email. A copy was also sent to the Panel on the same date by email. The Panel was appointed on August 24, 2001.
3.9 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
On January 26, 2001, the Complainant submitted to the National Arbitration Forum a complaint (Claim Number: FA0101000096532) ["NAF 96532"] against the present Respondent in respect of the same domain name. On March 8, 2001, the NAF denied that complaint on the grounds that the Complainant had "failed to prove each of the three elements under Section 4(a) of the Policy" (see "http://www.arbforum.com/domains/decisions/96532.htm").
The Complainant now submits, to a different Provider, an application for a "Re-filed Complaint" based upon the decision in Creo Products v. Website in Development, WIPO Case No. D2000-1490 ("Creo 2") which was determined by Dr. Andrew Christie. Creo 2 was a re-filing of the complaint the subject of the decision Creo Products v. Website in Development, WIPO Case No. D2000-0160, made by Mr. Philip Argy. Both Dr. Christie and Mr. Argy are members of the present Panel. The Complainant specifically requested that Dr. Christie be appointed to the Panel.
In its application for a re-hearing, the Complainant has simply re-stated much of its original complaint in NAF 96532. The "new" evidence that the Complainant apparently relies upon in support of its application for a "re-filing" is the fact that on May 21, 2001, some two months after the decision in NAF 96532, the Respondent stated to the Complainant by email:
"Ö we are willing to sell domain name furrytails.com [and] US Corporation Furrytails Inc for the sum of GBP 98 000."
The Complainant also asserts that there existed a factual error in NAF96532, namely, that the Complainant did not file its application for the USA trademark "Furrytails" on the day of submitting its complaint but rather nine days earlier (January 12, 2001). The Panel notes the current suspension of that application for a registered trademark.
4.2 Activities of the Respondent
The Respondent is a former employee of the Complainant who sold his business to the Complainant in 1997. Included in the terms of the sale was a non-competition clause which would survive for six months after termination of the contract of employment. The Respondentís employment with the Complainant was terminated in 1998 and, after complying with a six month non-competition clause, the Respondent set up a business selling resin toys in the United States, under the name Furrytoys.
The Respondent asserts that his email offer to sell the domain name for GBP 98,000 was sent solely in response to the Complainantís email of April 30, 2001:
"Just a quick email to see if you want to resolve the domain issue matter etc without us both wasting cash on litigation? If you do then let me have a proposal."
The Respondent explains that his email on May 21, 2001, to the Complainant was therefore not an unsolicited offer to sell the domain name, and that the consideration referred to was for the sale of the corporation Furrytails Inc together with the domain name <furrytails.com>. The Respondent has offered no evidence of the value of the corporation Furrytails Inc and the Panel has no substantive evidence before it about the age of that corporation nor its trading history other than incidental references in the Response which suggest that it has been conducting business for some years. There is no evidence from the Complainant that refutes this.
5. Original Arbitration Findings
In NAF 96532 the Panel refused the Complaint because:
(a) the Complainantís and the Respondentís marks were not identical or confusingly similar;
(b) the Respondent had a legitimate right and interest in the use of the name, Furrytails, as he had waited until after the expiry on the non-competition clause before launching his business selling resin toys. This was found to be a bona fide business; and,
(c) The Respondent had registered the domain name in 1999 and operated his business in a separate jurisdiction to the Complainant. The Respondent had not attempted to attack the Complainantís right to use the domain name, <furrytails.co.uk>, which was held to better reflect the geographical nature of the Complainantís business operations. The Respondent had made no attempts to sell the domain name to the Complainant at the time of the decision and was not attempting to disrupt the business of a competitor.
6.1 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. Under clause 15(a) of the Policy, a Panel 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" (emphasis added).
6.2 The Complainant expressly requests that this Panel ignore the decision in NAF 96532 and analyse this complaint as a "re-filed" application in accordance with the principles set out in Creo 2.
6.3 In Creo 2 Dr. Christie, as Sole Panelist, reviewed the decisions under the Policy to that time which were subsequent complaints filed in relation to the same domain name by the same complainant against the same respondent (so-called "re-filed complaints"). He drew a distinction between a re-filed complaint concerning the act which formed the basis of the original complaint, and a re-filed complaint concerning an act which has occurred subsequent to the decision on the original complaint. In relation to the former type of re-filed complaint, Dr. Christie adopted with approval the analysis of the panelist in Grove Broadcasting Co. Ltd v. Telesystems Communication Ltd, WIPO Case No. D2000-0703 ("Grove"). That decision set out four possible grounds for validly lodging a re-filed complaint:
(a) serious misconduct on the part of an arbitrator, lawyer or party; or
(b) perjured evidence being offered to the arbitrator; or
(c) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or,
(d) a breach of natural justice.
As discussed in Creo 2, a re-hearing under ground (c) would require:
1) proof that the evidence could not have been obtained with reasonable due diligence for use during the initial arbitration;
2) proof that, if the evidence had been presented at the initial arbitration, it would probably have had an important influence on the result of the arbitration (though it need not be decisive); and
3) that the evidence must be credible, although it need not be incontrovertible.
6.4 In relation to a re-filed complaint of the latter type (i.e. one based on an act subsequent to the original complaint), Dr. Christie in Creo 2 suggested (para. 6.14) that such a re-filed complaint should be heard on its merits provided 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".
6.5 The Complainant alleges that the Respondentís offer to sell the website to the Complainant for GBP98 000 constitutes an act subsequent to the decision on the original complaint, and as such is new evidence that may be properly entertained in a re-filed complaint.
7. Panel findings and discussion
7.1 In its request for a re-filed application, the only new evidence that the Complainant tenders is the Respondentís offer to sell the domain name <furrytails.com> (together with the Respondentís related business) to the Complainant for GBP98,000 in an email dated May 21, 2001. Thus, the ground on which the Complainant seeks to have this re-filed complaint entertained is the occurrence of an act subsequent to the decision on the original complaint.
7.2 This Panel adopts with approval the principles set out above from Creo 2 and Grove on the competency of re-filed complaints.
7.3 In particular, in relation to a re-filed complaint based on subsequent acts, this Panel adopts with approval the statement in Creo 2 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. 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."
7.4 In its original NAF complaint the Complainant stated:
"4.c.i Mitchell had attempted to sell the "furrytails.com" to the company with whom he had been an agent" (i.e., to the Complainant).
7.5 In its findings, the NAF Panel found that "no evidence has been presented to support the Complainantís claim that the Respondent offered to sell, for monetary gain, the domain name at issue to the Complainant".
7.6 In Rogers Cable Inc. v Arran Lal, WIPO Case No. D2001-0201, Mr. Argy, as Sole Panelist, expressed the view that a lump sum sale figure for a domain name together with goodwill for an associated business, by itself, could not indicate an intention to sell a domain name for an amount greater than the Respondentís out-of-pocket costs directly related to the domain name (absent any evidence of an apportionment of the separate values of the business and the domain name) for the purposes of section 4(b)(i) of the Policy.
7.7 As the only evidence to support the Complainantís argument of "new facts which would justify the consideration of a "re-filed" application" is the Respondentís email of May 21, 2001, in which he set out a sale price for the contested domain name and a related business, the Panel finds that this is an assertion immaterially different to the assertion made by the Complainant in its original complaint in NAF 96532.
7.8 On this basis, the Panel finds that the current complaint is merely based upon subsequent acts that are either a repetition of, or substantially the same as, the acts on which the previous complaint was based. Such a complaint falls squarely within the scope of the exception to the grounds on which a re-filed application will be entertained, as set out in 7.3 above.
7.9 The Panel therefore dismisses the Complainantís request for consideration of the re-filed application on the grounds that the Complaint in this case is incompetent.
7.10 In any event, the Complainant has failed totally to prove the three elements of the Policy on which it bears the onus of proof. On the best case for the Complainant, which includes accepting its evidence that its US trade mark application for Furrytails was filed on January 12, 2001, rather than January 24, 2001, as found by the NAF Panel, it has not proved against the Respondent the other two elements of the Policy.
8.1 The Complaint is dismissed as an incompetent refiling of a complaint previously submitted and dismissed under the Policy and in respect of which no valid basis for a refiling has been demonstrated. The Complainant having not proved all of the requirements of paragraph 4(a) of the Policy, and for the purposes of paragraph 3(c) of the Policy, the Complaint is in any event also dismissed on that alternative basis. The domain name <furrytails.com> is accordingly to remain registered to the Respondent.
Philip N. Argy
Andrew F. Christie
Kenneth A. Genoni
Dated: September 6, 2001