Re-filing of a Complaint. A High Bar to Satisfy if You’re Looking for a “Second Bite at the Cherry.”
Hassan Shams v. Private Registration / WhoisGuardService.com
Claim Number: FA1611001703556
Hassan Shams v Private Registration offers us a very intriguing insight into a situation where a Complainant has attempted to take a “second bite at the cherry” after having been denied their first request for a transfer of domain name.
The Complainant in Hassan Shams had used the trade name SOCCER MALL for over 16 years to sell a range of goods associated with soccer. Despite the long use of the trade name, the Complainant only filed for the trade mark in 2014, with registration successful in June 2016. The Complainant claimed that the Respondent was using the disputed domain name in deliberate bad faith as it: (a) redirected email traffic to a competitors’ websites; and (b) displayed advertisements for the sale of the domain name.
The Respondent was a Chinese company that owned the domain name, <soccermall.com>, which was registered in 10 August 2010. In a frequent “ can’t-argue-bad faith-if-domain name-was-registered-before-trademark” situation, the Claimant had been denied its request for the transfer of the domain name in a previous application it had made (FA 1689685 on 5 October 2016). In legal terms, this is Res Judicata – that a decision by a court or tribunal is conclusive to all matters that were argued, or could have been argued, in a proceeding.
However, in an attempt to circumvent the application of Res Judicata, the Complainant approached the present transfer application with “new evidence”, arguing that the Respondent only received the transferred domain name on 4 May 2015, this being after the Complainant’s trade mark had been registered and knowing that it had been registered.
The Panelist dabbled with the argument by reviewing previous decisions and decided that “complaints may not be resubmitted for relief subsequent to their denial due to Res Judicata principles unless the complainant meets its high burden of demonstrating the need for such additional review.” These high standards include:
Serious misconduct on the part of a judge, juror, witness or lawyer;
Perjured evidence having been offered to the court;
The discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or
A breach of natural justice.
The Panelist notes that the new evidence which the Complainant was attempting to use in the present proceeding was information which “could have been reasonably foreseen or known in the course of the proceedings of FA 1689685.” As such, the Panelist denied the Complainant’s application for the second time in 2016.
The decision was therefore consistent with well established principles and a salutary reminder to complainants and their legal advisers not to assume that if they lose the first time, it will be easy to mount a second challenge. It will not be easy and may well fail.
 e.g., Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001)
 Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000)