In Alpine Entertainment Group v. Walter Alvarez, WIPO Case. D2007-1082 a three-member UDRP panel clarified one circumstance in which a previously unsuccessful UDRP complaint could be re-filed.
In the earlier case, the Complainant alleged common law rights to the term REALSPANKINGS. The Complainant also alleged Colorado State trademark rights as well as pointed out a pending trademark application, filed prior to the Respondent’s registration of the offending domain name (realspanking.com).
The panel in the earlier case gave no weight to the state trademark (despite contrary authority) and no weight to the Complainant’s common law rights.
Once the Complainant’s federal trademark perfected (over the objection of the Respondent in a letter of protest), the Complainant re-filed. As a re-filed complaint, the Panel’s first task was to determine whether it would entertain the new complaint. A commonly cited decision by Panels considering this issue is Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490, and the Panel in this case looked to Creo for guidance as well.
“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.”
The general rule is that a refiled complaint may be allowed under the Policy only in exceptional circumstances. See, e.g., Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703; Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490.
In the instant case, the Panel applied Creo and found that the perfection of the Complainant’s federal trademark rights rises to this level, and was sufficient grounds to have the case re-heard.
The new evidence is the evidence that the United States trademark REALSPANKINGS has now registered. Given that the prior case failed on the first element, the new evidence of trademark registration is likely to have an important influence on the result of the case, although it may not be decisive. The registration of the REALSPANKINGS trademark is not challenged by the Respondent.
This new evidence was not in existence at the time of the earlier decision and was therefore unable to be considered by the prior panel in relation to its original finding under the threshold first element of the Policy. The Panel therefore finds that the refiled Complaint should be heard by the present Panel. D2007-1082
Upon re-hearing the complaint, the Panel ruled 3-0 in favor of the Complainant.
Related post: Merck KGaA v. Paul Rostkowski, WIPO Case No. D2007-0482 (Re-Filed UDRP Action)
