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WIPO Arbitration and Mediation Center

Complainants are TABCORP Holdings Ltd, an Australian public company, limited by shares, and its wholly owned subsidiary, TABCORP Assets Pty Ltd, both having a place of business in Melbourne, Australia ("TABCORP").

Respondent is Steven Hertzberg, an individual with an address in San Carlos, California, U.S.A. ("Hertzberg").

The domain name in issue is <tabcorp.com>.

The registrar is Network Solutions Inc., Herndon, Virginia, U.S.A., ("NSI").

The WIPO Arbitration and Mediation Center (the Center) received the complaint in this proceeding via email on August 22, 2001, and in hard copy form, together with the requisite fees, on September 4, 2001.

On August 24, 2001, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On August 27, 2001, NSI transmitted via email to the Center NSI’s confirmation that (1) Hertzberg is the current registrant of the domain name in issue, (2) NSI Service Agreement Version 5 is in effect, and (3) the domain name registration is in "active status."

Also, on August 24, 2001, the Center advised the parties via email that

"The Center’s processing of the Complaint is without prejudice to the determination to be made by the Administrative Panel as to whether the arguments advanced by the Complainant in Paragraph 12 meet the refiling criteria set out in previous WIPO decisions, including WIPO Case Nos. D2000-0703 and D2000-1490."

On September 7, 2001, the Center requested TABCORP, who designated a three-member Administrative Panel, to provide names and contact details of three candidates for the Panel by September 12, 2001. The Center received TABCORP’s nominations via email on September 12, 2001 and in hard copy form on September 18, 2001.

On September 18, 2001, the Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).

On September 19, 2001, the Center transmitted to the parties Notification of Complaint and Commencement of Administrative Proceeding, together with copy of complaint and its addendum. The Center advised the parties that the formal date of the commencement of this administrative proceeding is September 19, 2001, and the last day for sending Hertzberg’s response is October 9, 2001.

On October 9, 2001, the Center received respondents’ response via email, and on October 11, 2001, in hard copy.

On October 16, 2001, the Center advised the parties that Jonas Gulliksson and Dan Hunter had been appointed as Panelists. On November 5, 2001, the Center advised the parties that David W. Plant had been appointed as Presiding Panelist. The Center advised that absent exceptional circumstances, the panel is required to forward its decision to the Center by November 19, 2001. On November 19, 2001, the Center advised the parties that the decision due date had been extended to December 3, 2001.

The complaint is based on TABCORP’s Australian registered trademark "TABCORP (including an image eclipse incomplete breaks star)", lodged on September 17, 1997 and registered as Trade Mark No. 744217 (Exhibit H to the complaint), and on TABCORP’s common law rights in the mark.

TABCORP avers also that it has registered the domain name <tabcorp.com.au> and operates a website at that address.

TABCORP avers that it submitted a complaint ("original complaint") to the Center on June 7, 2000, relating to two domain names held by Hertzberg, viz. <tabcorp.com> and <tabcorp.org>. TABCORP avers further that the panel in that hearing ("original panel")

"ordered that tabcorp.org be transferred to the Complainant, but declined to order that tabcorp.com be transferred to the Complainant on the grounds that there was no more than a suspicion that the Respondent had registered the domain name in bad faith ... " (Complaint ¶ 12(a)).

A copy of the original decision appears at Annex C to the complaint. It is WIPO Case No. D2000-0566. In his decision dated September 20, 2000, the original panelist found that, with respect to <tabcorp.com>, TABCORP had satisfied all of the criteria of Paragraph 4.a. of the Policy, except for bad faith registration. The original panelist stated:

"Subsequent bad faith use does not necessarily prove bad faith registration. In this case, the presence of the Respondent in Australia at the time of registration excites suspicion. But, given his statutory declaration that he did not know of the Complainant at the date he registered the domain name, compared with the Complainant’s hearsay suggestion that he did, it will be for a Court to determine where the truth lies. The Panel finds bad faith registration not proved."

* * *

"In relation to the Respondent’s dealings with Ms. Baker, it is not possible for a Panelist in this expedited proceeding to make any credibility findings. There is a clear conflict of evidence between the suggested evidence of Ms. Baker (produced only by a note of a conversation) that the Respondent’s motive in registering the domain name <tabcorp.com> was later to sell it at a profit. In evidence produced in a more satisfactory form, Respondent denies this. There is also a conflict whether or not the domain name was held on trust by the Respondent for Ms. Baker’s Trust. This has an impact on the Complainant’s approach to NSI to transfer the name which the Respondent characterizes as ‘unclean hands’ by the Complainant. Such matters can only be determined in a Court of competent jurisdiction and not by a WIPO Panelist operating under the ICANN Dispute Resolution Policy."

* * *

"The Panel decides that the Complainant has not made out a sufficient case for the transfer of the domain name "tabcorp.com". At best for the Complainant, there is only a suspicion that this domain name was registered in bad faith. The Complainant will have to take Court proceedings if it wishes. The Panel declines to order the transfer of the domain name <tabcorp.com>."

The original panel noted that TABCORP submitted a file note by its employee Mr. McPhail as to a conversation he allegedly had with Ms. Baker. The original panel stated:

"No affidavit or statutory declaration from Mr. McPhail or Ms. Baker was filed".

* * *

"His [Hertzberg’s] statutory declaration in support of his contentions is better evidence than the Complainant’s presentation of a file note of an employee’s conversation with Ms. Baker or of a letter from Ms. Baker. However, even if the Complainant had provided a higher standard of evidence, the Panel would not be in a position to adjudicate on credibility issues."

TABCORP urges that, under two WIPO decisions (Grove Broadcasting Co. Ltd., v. Telesystems Communications Limited, WIPO Case No. D2000-0703, and Creo Products Inc., v. Website In Development, WIPO Case No. D2000-1490), a "Refiled Complaint" will be accepted under certain circumstances stated in those decisions. Here, TABCORP attempts to satisfy two of the circumstances by offering an August 17, 2000 declaration of Carolyn Jane Baker, which TABCORP claims was not available to the original panel (Complaint ¶ 12(a)(ii)-(vii)). TABCORP asserts that the Baker declaration (a) is credible and material evidence which could not reasonably have been obtained by TABCORP for the original complaint, and (b) establishes that evidence offered to the original panel by Hertzberg was perjured and fraudulent.

Paragraphs 12(b)-(f) set out TABCORP’s averments as to Hertzberg’s activities which TABCORP asserts justify transfer of the domain name to TABCORP. Not surprisingly, the complaint in this proceeding is virtually a verbatim reproduction of the original complaint [1] with regard to (i) identity and confusing similarity, (ii) no rights or legitimate interests (except for a revised description of the offending web site), and (iii) bad faith use and bad faith registration (except for references to the Baker declaration, a declaration by Marcus Hoyne re his dealings with regard to the Baker declaration, another Hoyne declaration re changes in Hertzberg’s contact details, a declaration by Mr. Hoyne’s assistant, a declaration by Francis McPhail re dealings with Ms. Baker, and a revised description of the offending web site) [2]. Mr. Hoyne was TABCORP’s authorized representative in the original proceeding. Mr. McPhail was an employee of TABCORP "at all relevant times".

TABCORP requests that the panel decide that the domain name in dispute be transferred to TABCORP.

Hertzberg asserts that the Baker declaration contains information already offered by TABCORP and considered by the original panelist. Hertzberg avers the original complaint, submitted on June 7 and 13, 2000, asserted certain communications had occurred between Ms. Baker and Hertzberg, and between Mr. McPhail and Hertzberg, and states TABCORP did not submit an affidavit or declaration from either Ms. Baker or Mr. McPhail.

Hertzberg asserts that he filed a response in the original proceeding, and on September 6, 2000, the Center transmitted the original complaint and original response to the original panel. Hertzberg quotes from the original decision as to the shortcomings in TABCORP’s evidence.

Hertzberg contends the "Refiled Complaint"is "brought by the same Complainant based on the same evidence against the same Respondent and seeks the same transfer of the same domain name." Hertzberg cites Creo Products to the effect that TABCORP bears a high burden of establishing that this complaint should be entertained.

Hertzberg contends that TABCORP "does not allege any facts or subsequent conduct by the Respondent which it did not allege in the Original Complaint." Hertzberg cites Backstreet Boys Pruductions, Inc., v. Zuccarini, WIPO Case No. D2000-1619, for the circumstances that may warrant acceptance of a refiled complaint. Hertzberg cites Creo Products and G.A. Modafine S.A. v. Sparco P/L, WIPO Case No. D2001-0370, for the proposition that "new evidence" which might justify acceptance of a refiled complaint is evidence which "could not have been obtained with reasonable diligence for use at the trial" and "would probably have an important influence on the result of the case." Hertzberg contends the Baker declaration is merely a new form of old evidence and is not "new evidence". Hertzberg discusses in detail the original panelist’s consideration of TABCORP’s original assertions concerning communications with and conduct of Ms. Baker. Also, Hertzberg questions why, if the Baker declaration were indeed so important, TABCORP waited over a year to refile its complaint.

Hertzberg cites G.A. Modafine and Grove Broadcasting for the proposition that a subsequent panel should be reluctant to overrule a prior panel on the merits.

Hertzberg requests that this panel deny TABCORP’s requested relief, and on the ground that this proceeding cannot have been initiated in good faith, requests that TABCORP be ordered to compensate Hertzberg for its reasonable attorneys’ fees and costs for defending "both this action and subsequent [sic] action."

Paragraph 4.(a) of the Policy directs that complainants must prove, with respect to each domain name in issue, each of the following:

(i) The domain name is identical or confusingly similar to a mark in which complainants have rights, and

(ii) Respondents have no rights or legitimate interests in respect of the domain name, and

(iii) The domain name has been registered and is being used in bad faith.

However this is an unusual case, since it is a re-filing of an earlier Complaint with some additional evidence, and the Complainant in essence is requesting that this Panel re-adjudicate the matter. Therefore, because of the special nature of this case, before examining the substantive requirements of paragraph 4.(a) it is necessary to deal with a number of procedural issues that the Complaint raises.

Here, this panel is asked to re-adjudicate the issues decided in the original proceeding with respect to the domain name <tabcorp.com>. This panel declines to accept this invitation.

There is no provision either in the Policy or the Rules which provides guidance as to the re-filing of cases. Under Paragraph 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". Two seminal cases within the UDRP (Grove Broadcasting, WIPO Case No. D2000-0703 and Creo Products, WIPO Case No. D2000-1490) have considered this issue, and both have come to essentially the same conclusion. In situations such as this case, where the re-filing is not based on a respondent’s conduct occurring subsequent to the original,

"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 ...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." (Grove Broadcasting, WIPO Case No. D2000-0703 at ¶ 6.)

On the only matter in issue in this proceeding–"the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial"–the Grove and Creo Panels identified the nature of the evidence

"...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" (Grove Broadcasting, WIPO Case No. D2000-0703 at paragraph 6, quoting 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).

We concur with the basic principles established in Grove Broadcasting and Creo Products, and agree in general terms with the learned Panels in both of those cases. We note that a number of other Panels have made similar findings, and it seems that a broad consensus on this issue is now emerging. See e.g. Backstreet Boys v. Zuccarini, WIPO Case No. D2000-1619; Furrytails Limited v. Andrew Mitchell d/b/a Oxford Die-Cast, WIPO Case No. D2001-0857.

What then of the particular invitation in this proceeding, and specifically the nature of the evidence which the Complainant argues is "new evidence" sufficient to ground the re-filing of the proceeding? It is abundantly plain on this record that the complaint in this proceeding is grounded on the same averments as to bad faith registration as the original complaint. The only difference between the two complaints is that this complaint is accompanied by declarations. The declarations do not save this complaint. They cannot re-do TABCORP’s failure in the original proceeding to carry its burden of proving bad faith registration of <tabcorp.com>.

Wholly apart from its content, the executed copy of the Baker declaration of August 17, 2000, is not new evidence. The Baker declaration was in the hands of TABCORP’s counsel on August 18, 2000 (Hoyne Decl. ¶ 25). On August 18, 2000, counsel filed the Baker declaration (Id. ¶ 26). According to the Hoyne declaration, the Baker declaration was not transmitted to the panelist who rendered the original decision (Id. ¶ 28) [3]. According to the original decision, the file was transmitted via courier on September 6, 2000, to the panelist who rendered the original decision. Thus, the Baker declaration was available to TABCORP, i.e. in the possession of its counsel, 19 days before the original file was transmitted to the panelist, and 34 days before the panelist rendered the original decision. Having been transmitted to the Center on August 18, 2000, the Baker declaration was in the Center’s possession during roughly the same period of time.

TABCORP had a clear opportunity to present the Baker declaration to the original panelist. It is not uncommon in proceedings under the Policy for a party to submit to the Center additional documents, notwithstanding the absence of express authorization to do so in the Policy, the Rules or the Supplemental Rules. It is also not uncommon for the Center to transmit to panels such out of season submissions. At the least, it would have been reasonable and diligent for TABCORP to have tried to assure that the deciding panelist in the original proceeding would have the Baker declaration. TABCORP acted at its peril in not attempting to assure that the Baker declaration would be considered by the deciding panelist, especially when the file was not transmitted to that panelist until three weeks after TABCORP’s counsel had transmitted the declaration to the Center. The Baker declaration is not new evidence.

The McPhail declaration was executed on August 18, 2000. Accordingly, like the Baker declaration, TABCORP could at least have attempted to bring the McPhail declaration to the original panelist’s attention before he commenced his deliberations. The present complaint is entirely silent on this score. Presumably, even if TABCORP were frustrated in April and May 2000 in its attempts to obtain a declaration from Ms. Baker, TABCORP should not have experienced any difficulty with its own employee. The McPhail declaration is not new evidence.

In light of the observations of the original panelist (e.g. "even if Complainant had provided a higher standard of evidence, the Panel would not be in a position to adjudicate on credibility issues"), it is plain that the Baker declaration and the McPhail declaration are not material to the disposition of this matter on the merits. They simply elaborate on matters averred by TABCORP in the original complaint. It is clear they would only have sharpened the credibility contest and would not have influenced the outcome in the original proceeding. Like the original panelist, this panel would find it inappropriate to rule on the credibility issues raised by the pleadings in this proceeding. In particular, this panel could not find perjury or fraud on the record before it.

In Creo Products, the panel accepted a refiled complaint because it was based, in part, on acts occurring subsequent to the previous decision. That is not our case. Importantly, for our purposes, the Creo Products panelist observed:

" ... some general principles about the determination of this issue [entertaining a Refiled Complaint] can and should be stated, 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. ..."

We conclude that the Complainant has failed to meet its "high burden". The situation here fits under Grove Broadcasting, where the panelist stated:

"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. This 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. ... Parties are expected to ‘get it right’ the first time."

Given this procedural finding, it is unnecessary for us to consider the substantive requirements of Paragraph 4.(a).

Paragraph 4.(k) makes it plain that court proceedings are available to the parties both before a mandatory administrative proceeding is commenced under the Policy, as well as after such a proceeding is concluded. The UDRP is clearly not the appropriate mechanism for the resolution of this dispute. In the circumstances, the Complainant is free to make use of the provisions of Paragraph 4.(k).

As for Hertzberg’s request that TABCORP be ordered to compensate Hertzberg for his attorney fees and costs, Hertzberg cites no authority – and the panel finds none – authorizing this panel to issue such an order.

In light of the findings by the panel, the panel decides that TABCORP has not met its burden of proving this panel should accept and consider the complaint in this proceeding on the merits. Accordingly, the panel declines to consider the complaint and orders that it be dismissed with prejudice.

The panel denies Hertzberg’s request that attorney fees and costs be awarded to Hertzberg.

David W. Plant
Presiding Panelist

Jonas Gulliksson
Panelist

Dan Hunter
Panelist

Dated: December 3, 2001

Footnotes:

1. A copy of the original complaint appears at Exhibit A to the Response.

2. Only the Baker declaration is asserted as having been "not available to the Original Panel" (Complaint ¶ 12(c)(ii)).

3. The Hoyne declaration refers to an "original panellist" in the original proceeding, who apparently requested additional information, and a "second panellist", who apparently did not receive the requested information (Id. ¶¶ 23, 26, 28, 29). This is the only reference in this record to this episode. It appears that the August 17, 2000, Baker declaration was prepared and executed in response to TABCORP ’s counsel’s request of August 16, 2000, notwithstanding that counsel’s original request appears to have been made in April 2000 (Id. ¶¶ 5, 6) and TABCORP’s counsel had apparently abandoned the notion of relying on such a declaration.