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Ficep.com Registrant Wins Again and Panelist Declares RDNH

Posted on the 28 April 2014 by Worldwide @thedomains

Second time around is no better than the first for Ficep SPA, they filed a second UDRP to try to get the domain FICEP.com. This was not company vs domain investor but rather an Italian company founded in 1930 vs a French company founded in 1978.

The panelist did not seem too happy that the Italian company filed a second UDRP on the same name with basically all the same facts.  Janet Seager went on to say,

Furthermore the Panel finds that the Complainant has engaged in RDNH because, at the time that the Second Complaint was filed, the new evidence had not yet come into existence, meaning that the Second Complaint was substantially similar to the First Complaint. Given the unequivocal nature of the First Decision, the Complainant must therefore have known that the Second Complaint had no reasonable chance of success.

The Panel therefore dismisses the re-filed Complaint without going on to consider it on the merits.

However for the sake of completeness the Panel briefly adds that it has considered both the Complaint and the Response and all three Supplemental Filings, even though such filings are usually only accepted on an exceptional basis as the UDRP is intended to be a short, quick procedure. In this case the Panel was of the opinion that the Complainant’s First Supplemental Filing was required, as it was the first time that the Complainant had set forth the necessary argumentation concerning why the re-filed Complaint should be accepted, and the Respondent needed to be given the opportunity to reply to this in its Supplemental Filing. The Panel allowed the Complainant’s Second Supplemental Filing to be admitted only because it was very short, but would not have allowed any further submissions from the parties.

Having considered all the pleadings and the evidence the Panel would just briefly conclude that, had it indeed gone on to consider this case on the merits, it would not have found any differently from the learned panel who made the First Decision, precisely because the supposed new evidence was simply not material and there are no other facts or circumstances that appear to be significantly different.

Reverse Domain Name Hijacking

For a Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”) it is not necessary for the Respondent to have requested such a finding. As can be seen from paragraph 15(e) of the Rules, if the Panel finds that the Complaint was brought in bad faith, he or she is under an obligation to so declare in the decision:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Prior Panels have found that a finding of RDNH is merited for a number of reasons, including if the Complainant knew that the Complaint was doomed to failure (Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603).

In this case, the Complainant re-filed a very similar Second Complaint and made no reference to the fact that it was a re-filing until asked by the CAC, initially leaving the section dealing with other proceedings blank. The First Complaint resulted in a clear-cut decision in favour of the Respondent, and the panel did not hint that this was a case where a re-filing could potentially be possible. Even when the Complainant filed the amended version of its Second Complaint making brief reference to the First Decision, it made no attempt to explain why a re-filing should be accepted, and only provided arguments in this respect (concerning new evidence) in its First Supplemental Filing after the Respondent highlighted the issue.

However, the reason that the Complainant did not provide arguments relating to the supposed new evidence in its re-filed Second Complaint was undoubtedly the fact that, at the time that the Second Complaint was filed, neither of these two pieces of evidence was known to it because they were not yet in existence. The Complainant filed its amended Complaint on 20 February 2014, but OHIM did not reject the Respondent’s opposition until 13 March 2014, and, by its own admission, the Complainant was not aware of the French police report until the Respondent made reference to this in its Response (and in any case the report was made on 11 March 2014).

Thus it is clear that, at the time that the Complainant filed the Second Complaint, there were absolutely no grounds in existence to justify a re-filing because nothing had changed since the First Decision. The new evidence (although not in fact material) had not even come into existence. Given that the First Decision was very clear and left no room for argument, it is therefore reasonable to assume that the Complainant must have known that the Second Complaint had no reasonable chance of success. Given this the Panel finds that the Complainant’s failure to declare the First Decision in the initial version of its Second Complaint was unlikely to have been an accidental omission and is thus relevant for the Panel’s consideration of RDNH (as also underlined in the WIPO Overview 2.0 set out above). In the Panel’s opinion, the Respondent should never have been put to the time and expense of defending the Second Complaint and should certainly not be troubled by further similar Complaints.

The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Summary

The Panel finds that this is a re-filed Complaint and that it should not be accepted and considered on the merits by the Panel as none of the limited grounds for allowing re-filed complaints have been made out by the Complainant. In this regard the Complainant argued in its First Supplemental Filing that two new pieces of evidence had come to light, but neither of these pieces of evidence was material and had any bearing on any of the three criteria that must necessarily be made out under the UDRP.

Furthermore the Panel finds that the Complainant has engaged in RDNH because, at the time that the Second Complaint was filed, the new evidence had not yet come into existence, meaning that the Second Complaint was substantially similar to the First Complaint. Given the unequivocal nature of the First Decision, the Complainant must therefore have known that the Second Complaint had no reasonable chance of success. However the Complainant did not declare that the Second Complaint was a re-filing until prompted by the CAC.
Decision
For all the following reasons, the Complaint is     Rejected
and the disputed domain name(s) are to be FICEP.COM

Panelists
Name     Jane Seager

http://udrp.adr.eu/adr/decisions/decision.php?dispute_id=100739


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