philips.ws

Complainant is Koninklijke Philips Electronics N.V. ("Philips" or "Complainant"), a Netherlands corporation, with headquarters in Eindhoven, The Netherlands. Complainant is represented by Mr. J.J.E.C.G. Vandekerckhove of Philips.

Respondent is Relson Limited of Telford, United Kingdom ("Relson" or "Respondent"). Respondent has not made an appearance in these proceedings.

The domain name at issue is <philips.ws> (<philips.ws> or the "Domain Name").

The Registrar of the domain name is Global Domains International ("GDI").

The WIPO Arbitration and Mediation Center (the "Center") received Philips’s Complaint (the "Complaint") by email on January 30, 2002, and in hard copy on February 1, 2002. The Complainant elected to have the dispute decided by a single-member Administrative Panel. As required by 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"), payment of $1500 has been made to the Center.

A copy of the Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was sent by the Complainant to the Respondent on January 30, 2002. A copy was also sent to GDI on January 30, 2002.

On February 5, 2002, the Center transmitted via email to GDI a request for registrar verification of the domain name. GDI’s Verification Response was sent on February 14, 2002, via email to the Center, confirming that the domain name was in fact registered to Respondent.

The Center subsequently reviewed the Complaint to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules.

On March 25, 2002, the Center formally commenced this administrative proceeding by transmitting to Respondent a Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via courier and email. The Center advised Respondent that the Response was due on April 14, 2002, and described the consequences of a default if a Response was not sent by that date.

Respondent failed to provide a Response as required under the Rules by the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding. On April 17, 2002, the Center notified Respondent via email that it was in default.

On April 30, 2002, after clearing for potential conflicts, the Center appointed David H. Bernstein as the Sole Panelist and informed the parties that the expected date of decision was May 14, 2002.

On May 6, 2002, after reviewing the file, the Panel contacted the Center to advise that the Complaint did not include all ten annexes referenced therein; specifically, the Complaint was missing annex 6, identified in the Complaint as a previously filed Complaint under the policy, annexes 1, 2, 3, 4, 5, and 7 and the attachments to annex 10. The Panel asked the Center to obtain a complete set of annexes from the Complainant. Between May 8, 2002, and May 16, 2002, the Center supplied the Panel with additional annexes as well as the attachments to annex 10.

The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and GDI which incorporates, by reference, the Policy in effect at the time of the dispute. The Policy requires that domain name registrants such as Respondent submit to a mandatory administrative proceeding regarding third-party allegations of abusive domain name registration (Policy, paragraph 4(a)). The Policy and the Rules establish procedures intended to assure that Respondents are given adequate notice of proceedings commenced against them, as well as a reasonable opportunity to respond (see, e.g., Rule 2(a)). The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply resulting in its default is not due to any omission by the Center.

This proceeding is not the first time this Complainant has filed a Complaint under the Policy against Respondent regarding the Domain Name. On September 4, 2001, Complainant filed a substantially similar Complaint against Respondent under the Policy. In that proceeding, Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003 (November 15, 2001) -- a proceeding in which Respondent similarly failed to provide a Response -- the Panel found that Complainant had not met its burden and had not proven that Respondent had no legitimate purpose for registering the Domain Name and that Respondent had acted in bad faith. Specifically, the Panel found that "there are not even assertions [of no legitimate purpose] unmet by the failure of the Respondent to file a Response." The Panel found that the Complainant had "fallen very far short of the mark" in trying to prove bad faith.

The Panel in the original proceeding noted that it was fortified in its decision by the rulings of previous Panels in cases brought pursuant to the Policy by Complainant in which Complainant had failed to allege a prima facie case, including Koninklijke Philips Electronics N.V. v. Jaaska Kaketti, WIPO Case No. D2001-0231 (April 2, 2001) (Panel concluded that "the statements made are not elaborated enough and the documentation submitted to support these statements not sufficiently conclusive to prove, with the degree of certainty needed, the veracity of Complainant’s allegations as regards Respondent’s rights or legitimate interests in respect of the domain name), and Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796 (October 10, 2001) (Panel concluded that "the Complainant has failed to show that there is no legitimate interest on the part of the Respondent; under these circumstances, the Complainant has not made a sufficient case for bad faith on the part of the Respondent, and in particular helps to explain – if not justify – the Respondent’s failure to formally respond to the cease and desist letter").

Complainant now seeks to re-submit this dispute under the Policy, claiming that it has new evidence which "could not have reasonably been available to the Complainant at the time of the original hearing since there was no possibility to have queried the relevant database for information on the domain names registered by the Respondent coupled with the lack of expertise required in acquiring the information obtained." The "new" evidence presented by Complainant is that it learned, through correspondence with a representative of the Administrator of the .WS ccTLD in January 2002, that Respondent had registered numerous domain names in the .WS ccTLD that contained trademarked terms. As a result of its obtaining this information, Complainant engaged an Internet investigative firm called NetSearchers to investigate Respondent, which investigation included obtaining additional information regarding the domain names registered by Respondent incorporating trademarked terms.

The whole of the "Factual And Legal Grounds" component of the Complaint in this case is, verbatim, as follows:

This Complaint is based on the following grounds:

That the trademark "Philips" has been registered by the predecessors of Koninklijke Philips Electronics N.V. (KPENV), in the Netherlands, since 1891 and is registered in numerous jurisdictions worldwide. The trademark "Philips" is synonymous with a wide spectrum of products varying from consumer electronics to domestic appliances, and from security systems to semiconductors. "Philips" brand name is the company’s most important asset as it has spent substantially on supporting its brand worldwide. List of major countries registered worldwide is attached herewith as Annex [4] as well as a copy of the certificate of registration in Western Samoa as Annex [5].

That new evidence in relation to the acts which formed part of the basis of the previous Complaint, namely paragraph 3(d), between the Complainant and Respondent, subsequent to the decision of the Previous Complaint, have occurred, that is, the discovery of evidence which could not have reasonably been available to the Complainant at the time of the original hearing since there was no possibility to have queried the relevant database for information on the domain names registered by the Respondent coupled with the lack of expertise required in acquiring the information obtained. [Refer to eResolution Case AF-0287, WIPO Case Nos. D2000-1490, D2000-0158 and D2000-1619 to determine this element]. Please refer to section 3(h) for details of new evidence. The original Complaint is attached herewith as Annex [6];

In accordance with Rules, para. 3(b)(ix), the following are our representation:-

1. The domain name in question is identical and similar to the "Philips" trademark registered by the Complainant in which it has rights to.

2. The Respondent has no rights or legitimate interests to the domain name as it has been registered primarily for the following reasons:-

(a) For the purpose that the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, in the Western Samoa.

(b) For the purpose speculating on the profitability of the domain names as the domain names were not used and the Respondent was not commonly known by the said domain name [Space Imaging LLC v. Stephen J. Brownell – AF 0298a-0298d];

(c) For the purpose that the Complainant has not licensed or otherwise permitted the Respondent to register the domain name incorporating the word "Philips" within the domain name [Nokia Corporation v. Nokiagirls.com a.k.a. IBCC , WIPO Case No. D2000-0102; Veuve Clicquot Ponsardin v. Net-Promotion, Inc., WIPO Case No. D2000-0347]; and

(d) For the purpose of disrupting the business of the Complainant. Before any notice was communicated to the Respondent of the dispute, there was no evidence of the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. In addition, no attempt was made after the Respondent received a letter from the Complainant explaining its concern of the registration of the domain name.

3. As evident from the above reasons, the registration of the domain name has been clearly registered in bad faith for the following reasons:-

(a) The registration was based on a domain name speculation without real intent to use. The Respondent has not communicated to the Complainant any plan for a bona fide use of his domain name.

(b) The registration of the domain name in question causes unfairness and is certainly detrimental to the business of the Complainant as the mark is influential in the field of business it was registered for in the Western Samoa. It deprives the general public, particularly in the Western Samoa access to the Complainant and vice versa.

(c) It could easily be inferred or concluded that since the domain name does not resolve to an active website, that the Respondent had the intention of transferring the domain name for valuable consideration, perhaps in the future [Space Imaging LLC v. Stephen J. Brownell – AF 0298a-0298d.

(d) The Respondent has not responded or leveled a challenge to the content/averments in the Complainant’s cease/desist letter relating to the domain name [Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273]. In addition, the Complainant has attempted contacting the Respondent via the "Contact Domain Owner" service provided by the Registrar on its website but did not receive a response. The Complainant had requested the assistance of external lawyers to attempt to get more information on the Respondent’s contact details. Thereafter, the Complainant attempted to contact the Respondent via fax and telephone as well as via post, having obtained the information from the UK Companies’ House. A copy of the fax transmitted to the Respondent, attached with the said cease/desist letter, is attached herewith as Annex [7];

(e) The Respondent registered the domain name to perhaps intentionally create a likelihood of confusion as to the source, sponsorship or affiliation with the Complainant’s mark, particularly in the Western Samoa – AltaVista Company v. West Coast Entertainment, Inc. – FA0007000095265];

(f) The registration took place with an intention to sell or transfer to the Complainant for profits.

(g) The Respondent had clearly no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name.

(h) The Respondent is engaged in a pattern of conduct, which includes possible domain name speculation. This deduction can be derived from the messages sent to the Complainant by the Business Development Manager at Website.ws. These e-mail messages are included in this Complaint as Annex [8]. The messages had spurred the Complainant to explore further. It should be noted that it was impossible for the Complainant to have queried the database of the Western Samoan NIC as a result of the privacy policy adopted, as explained by the Business Development Manager in the correspondence with the Complainant. Once the Complainant had attained the knowledge that the Respondent had registered other domain names containing famous trademarks, the Complainant sought the expertise of an external agent who specializes in the field of domain names and Internet searching. The agent explains briefly, in the attached Annex [9], the methods used in performing its search. The agent thus provided the Complainant with a comprehensive report on the Respondent’s activities which includes a list of domain names which have been registered by the Respondent containing the other trademarks. The report and the list are attached herewith as Annex [10]. The report and the list clearly demonstrate that the Respondent has engaged in a pattern of conduct, which proves bad-faith on its part.

The Respondent did not reply to the Complaint or otherwise participate in the proceedings.Accordingly, the factual averments of the Complaint are accepted as true for purposes of this proceeding. Talk City Inc. v. Robertson, WIPO Case No. D2000-0009 (February 29, 2000) (noting that Rule 14(b) expressly provides that the Panel "shall draw such inferences" from the Respondent’s failure to comply with the rules "as it considers appropriate" and the Panel is charged under Rule 15(a) with rendering its decision "on the basis of the statements and documents submitted").

The Panel is being asked by Complainant to re-adjudicate the issues decided in the original proceeding with respect to the Domain Name. Under Rule 15(a), 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." Neither the Policy nor the Rules nor the Supplemental Rules address the issue of whether a complainant may re-file a Complaint.

Although Complainant did not address the standards for allowing a Complaint to be re-litigated before a new Panel, this issue has been considered by a number of Panels in recent years. In Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703 (November 10, 2000), the Panel extensively considered the question of whether a proceeding could be relitigated after a defended hearing. The Panel noted that "[t]he only guidance in the Policy on the re-litigation of a Complaint . . .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 [pursuant to Paragraph 4(k) of the Policy]." The Panel then applied the common law principle that, once a party has been provided with a defended hearing in a court and a decision has been rendered, that case cannot be re-litigated unless either the decision is overturned on appeal or limited grounds for rehearing or reconsideration by the first-instance court have been established. The Panel provided four examples of such limited grounds: (i) serious misconduct on the part of a judge, juror, witness or lawyer; (ii) perjured evidence having been offered to the court; (iii) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and (iv) a breach of natural justice.

With respect to a claim that new evidence justifies re-litigation, the Panel in Grove Broadcasting set forth a three-part test for determining whether new evidence justifies the re-filing of a Complaint: (i) Complainant must prove that the evidence could not have been obtained with reasonable diligence for use at trial; (ii) the new evidence must be such that it would have an important influence on the result of the case; and (iii) the evidence must appear to be credible, although it need not be incontrovertible. In that case, the Panel found that the new Complaint merely contained information which the first Panel had indicated was required but the Complainant had failed to supply. Because the evidence could have been obtained for the first Complaint upon reasonable diligence by the Complainant, the Panel rejected the re-filed Complaint as inadmissible.

In Creo Products Inc. v. Website in Development, WIPO Case No. D2000-1490 (January 19, 2001), the Panel held that burden of establishing that the re-filed Complaint should be entertained under the Policy -- which is a high -- rests on the refiling Complainant. The Creo Products Panel defined two classes of re-filed cases: first, re-filed Complaints that concern the act which formed the basis of the original Complaint; and second, re-filed Complaints that concern acts which have occurred subsequent to the decision on the original Complaint. In that proceeding, the Panel found that the re-filed Complaint should be allowed because it was based both on new evidence in relation to the acts which formed the basis of the first Complaint and on acts which had occurred subsequently.

In Furrytails Ltd. v. Mitchell, WIPO Case No. D2001-0857 (September 13, 2001), the three-member Panel applied the approach taken in Creo Products to find that the re-filed Complaint was improper as it was merely based upon subsequent acts which were either a repetition of, or substantially the same as, the acts on which the first Complaint was based.

In Tabcorp Holdings Ltd. v. Hertzberg, WIPO Case No. D2001-1052 (December 3, 2001), the Panel, faced with a re-adjudication of issues decided in the original proceeding with regard to the domain name, agreed with the Grove Broadcasting and Creo Products Panels. The Panel found that the Complaint was grounded on the same averments as to bad faith registration as the original Complaint, the only difference being that the latter Complaint was accompanied by declarations. That Panel held that the Complainant "cannot re-do TABCORP’s failure in the original proceeding to carry its burden of proving bad faith registration of <tabcorp.com>."

In addition to Creo Products, there have been several other Panels that have decided to re-adjudicate issues decided in the original proceeding. In three of those proceedings, the first case had been decided "without prejudice" by the original Panels or the Panel implicitly invited the complaining party to re-file the Complaint. See G.A. Modefine S.A. v. Sparco P/L, WIPO Case No. D2001-0370 (May 6, 2001) (dismissed "without prejudice"); Parker Hannifin Corp. v. East Bay Website Co., eResolution No. AF-0587 (December 22, 2000) (dismissed "without prejudice"); Cluett, Peabody & Co. v. Sanford Bus. Writing Serv., NAF FA-95842 (December 12, 2000) (Panel invited re-filing). In another case, the Panel simply felt that the area of law was so new that claim preclusion would work a substantial injustice. High Speed Productions, Inc. v. Thrasher Magazine, Ltd., NAF FA-97008 (June 20, 2001). In the last case, the Panel found there was no prejudice to the respondent where the first Panel had indicated that, but for the omission of a piece of evidence from the record, it would have found against a clearly abusive domain name registrant. Jones Apparel Group, Inc. v. Jones Apparel Group.com, WIPO Case No. D2001-1041 (October 16, 2001).

Although Panels are not bound to follow the decisions of prior Panels, it nevertheless is appropriate to determine whether a majority view has developed among other Panels that have considered the same issue. Not only do such decisions frequently have persuasive weight and authority, but also, they reflect a consensus that is worthy of some deference. Divining and following such a consensus helps to ensure consistency among UDRP decisions, a critical component of any system of justice. Otherwise, and given the lack of an appellate remedy, the expected result in any given case would be random based on the identify of the Panelists, which would undermine the credibility of the entire UDRP process. See Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case D2000-1774 (February. 26, 2001), n.3.

In light of this principle, this Panel determines that it should follow the consensus view that has emerged regarding this issue. Accordingly, the Panel holds that a Complainant may not file a second Complaint against the same Respondent regarding the same domain name unless Complainant establishes that such a re-filed proceeding is appropriate under the Grove Broadcasting standards.

In this proceeding, the only possible ground that would justify a rehearing would be the discovery of new evidence. The Complainant has not, however, met its burden of showing that the evidence could not have been obtained with reasonable diligence for use in the first proceeding. To the contrary, it appears that NetSearchers could have developed this evidence earlier, had it been asked. Complainant did not, however, undertake any investigation prior to its first Complaint to determine whether Respondent had registered any other domain names (at least no investigation disclosed to this Panel). It was only after Complainant did not prevail on its original Complaint that Complainant sought further information on Respondent’s domain name registrations with the .ws registry and hired NetSearchers to follow-up on Respondent’s domain name registrations. Because that evidence could have been obtained for the first Complaint upon reasonable diligence by the Complainant, the re-filed Complaint must be rejected. Grove Broadcasting; Furrytails, Ltd.; Tabcorp Holdings Ltd.

This decision should not be read as a vindication of Relson Limited. If Relson Limited has in fact engaged in activity that constitutes abusive cybersquatting, then it should be stopped, and it should be stripped of this domain name. In light of Complainant’s failure to conduct proper due diligence before filing its first Complaint, though, Complainant can no longer achieve that result through the Policy, and thus, must now explore other options, such as filing suit in the appropriate national court.

For the foregoing reasons, the Complaint is dismissed because Complainant has not demonstrated a valid basis for the re-filing of a previously submitted and decided Complaint.