Domain names are bought and sold on the aftermarket every day, and thus domain name protection is increasingly important to trademark holders and licensees. In order to protect their domain names and fight against cybersquatters, a growing number of individuals and companies are filing domain name complaints to domain name dispute resolution service providers such as the Hong Kong International Arbitration Centre, which offers a more efficient and cost-effective dispute resolution process when compared to traditional courtroom proceedings.
Domain name proceedings may be conducted under a number of policies, some of the most common in Asia being Uniform Domain Name Dispute Resolution Policy and CNNIC ccTLD Dispute Resolution Policy. Unlike HKIRC Domain Name Dispute Resolution Policy which governs the mandatory arbitration proceedings, none of these policies contain an internal appellate mechanism or language that expressly restricts the re-filing of the same complaint or a similar complaint to any other domain name service provider. When a complaint in domain name proceedings is denied on the merits, occasionally complainants will attempt to re-file the same complaint for a second time.
In practice, the threshold for re-filing a domain name complaint is high if the same or a similar complaint has been denied by the original panel. This article will discuss the most widely adopted approach when determining whether a re-filed complaint can be accepted, i.e., the Grove/Creo standard and analyse HKIAC cases in which the complainants re-filed a complaint under the UDRP and CNDRP policies, respectively.
Domain name / Res Judicata / Re-filed Complaint / HKIAC / ADNDRC / UDRP / CNDRP / HKDRP
To be successful in UDRP and CNDRP proceedings, the Complainant must establish the following three elements: (i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent’s domain name has been registered and is being used in bad faith.1 For the HKDRP proceedings, to succeed, the Complainant must prove that the following four elements are present: (i) the Registrant’s domain name is identical or confusingly similar to a trademark or service mark in Hong Kong in which the Complainant has rights; (ii) the Registrant has no rights or legitimate interests in respect of the domain name; (iii) the Registrant’s domain name has been registered and is being used in bad faith; and (iv) if the domain name is registered by an individual person, the Registrant does not meet the registration requirements for that individual category of domain name.
Res Judicata in Domain Name Proceedings - Recent Cases in Hong Kong
Each domain name is unique and the domain name registration system adopts a “first come, first served” approach. This leads to an industry in which participants race to occupy what they perceive to be commercially valuable domain names. Naturally, popular internet keywords and famous trademarks have become the main subjects of domain name registration because they are perceived as potentially holding large commercial value and being more easily exchangeable between cybersquatters and investors. Brands like “TENCENT” “SUPREME” and “RIMOWA” are regular targets of cybersquatting, with creative variations of the trademark including “tencentblockchain.com”, “supremeita.com” and “irimowas.club”.
To avoid reputational damage and loss of website visits, brand owners and licensees need to bring actions to protect their brands and trademarks. This is best achieved by filing domain name complaints to domain name service providers, i.e., the Hong Kong International Arbitration Centre (“HKIAC”) which also acts as the Hong Kong office of the Asian Domain Name Dispute Resolution Centre (“ADNDRC”). The main remedy available in domain name proceedings is that a successful complainant can obtain the transfer of a domain name from a Respondent to it.
HKIAC is one of the world’s leading dispute resolution organizations, having administered more than 2,400 domain name cases since 2002. It provides domain name dispute resolution services in accordance with several policies including Uniform Domain Name Dispute Resolution Policy (“UDRP”), CNNIC ccTLD Dispute Resolution Policy (“CNDRP”) and HKIRC Domain Name Dispute Resolution Policy (“HKDRP”).
To be successful in UDRP and CNDRP proceedings, the Complainant must establish the following three elements: (i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent’s domain name has been registered and is being used in bad faith. For the HKDRP proceedings, to succeed, the Complainant must prove that the following four elements are present: (i) the Registrant’s domain name is identical or confusingly similar to a trademark or service mark in Hong Kong in which the Complainant has rights; (ii) the Registrant has no rights or legitimate interests in respect of the domain name; (iii) the Registrant’s domain name has been registered and is being used in bad faith; and (iv) if the domain name is registered by an individual person, the Registrant does not meet the registration requirements for that individual category of domain name.
Establishing a Respondent’s bad faith requires a Complainant to meet a high threshold. The Complainant might therefore not be able to establish the third element on its first attempt, and the complaint will therefore be denied. The UDRP and CNDRP Policies contain neither an internal appellate mechanism nor language that expressly allows or precludes the Complainant from re-filing the same complaint or a similar complaint to another domain name service provider. A party remains at liberty to seek any available remedies in a court proceeding.
Unlike UDRP and CNDRP administrative proceedings, the HKDRP Policy precisely provides that there is no procedure for re-filing a complaint as HKDRP proceeding is a mandatory arbitration proceeding which is governed by HKDRP Policy, Rules of Procedure of the HKDRP Policy (“HKDRP Rules of Procedure”), the Supplemental Rules of the Provider administering the proceedings (“HKDRP Supplemental Rules”) and the Hong Kong Arbitration Ordinance (“HKAO”). In other words, an award rendered in accordance with the HKDRP Policy is considered as an arbitral award rendered in Hong Kong and therefore the award shall be enforced in accordance with the Convention on the Recognition and Enforcement of Foreign Arbitral Awards (“New York Convention”) and it is final and binding.
What is a “re-filed complaint”?
A re-filed complaint is a subsequent complaint (whether or not precisely identical in substance) regarding the same domain name filed by the same Complainant against the same Respondent in the previous complaint. Generally, a re-filed complaint happens where: (i) a decision has been rendered and the panel has denied the original complaint; or (ii) no decision has been rendered and the proceeding of the original complaint was terminated on procedural grounds. Under the second scenario (which rarely occurs), a re-filed complaint may involve issues not dealt with by the original panel in the previous complaint and the UDRP Policy does not preclude a party from re-filing the complaint with the same UDRP domain name dispute resolution centre. This article will therefore focus on the first scenario (i.e., where a panel has denied the original complaint).
The Grove/Creo (WIPO Case No. D2000-0703 and WIPO case No. D2000-0158) standard is the most widely adopted approach by domain name panels when determining whether a re-filed complaint can be accepted or not.
Threshold for re-filing a domain name complaint
Sir Ian Barker QC in the WIPO case of Grove Broadcasting Co. Ltd v. Telesystems Communications Limited (WIPO Case No. D2000-0703) held that a case can only be re-litigated where: (i) the decision is overturned on appeal; and (ii) limited grounds for rehearing or reconsideration by the first-instance court have been established. The Grove test was further refined by Mr. Andrew F. Christie in the WIPO case of Creo Products Limited v. Website in Development (WIPO case No. D2000-0158). In Creo, Mr. Christie made a parallel analogy for re-filed cases in domain name proceedings based on the Grove approach, providing that a domain name complaint can only be accepted when: (i) the complainant establishes that relevant legal developments have occurred since the original decision; (ii) a breach of natural justice or of due process has objectively occurred; (iii) serious misconduct in the original case that influenced the outcome is subsequently identified; (iv) raw material evidence that was reasonably unavailable to the complainant during the original case is presented; or (v) the case has previously been decided expressly on a “without prejudice” basis.
The threshold for accepting a re-filed case is high and places a heavy burden on complainants under the doctrine of res judicata (i.e., preclusion of identical claims) and precludes the complainant from “forum shopping”.
Case analysis regarding res judicata under UDRP Policy
Paragraph 15(a) of the UDRP Rules has been interpreted to grant a panel broad direction to adopt “any rules and principles of law that it deems applicable” to reconsider a decided dispute although UDRP panels have no express appellate authority to rehear a dispute that has already been decided. Most UDRP panels have dismissed re-filed complaints after referring to the widely accepted legal principles of res judicata, judicial efficiency and the fundamental fairness of not imposing on respondents the burden of replying to repetitious complaints, sometimes expressed as a principle of “natural law”, “fair process”, or “due process”. However, some UDRP panels have accepted re-filed complaints.
A case in point is Evergrande Realestate Group Co., Ltd. v. Central American Domain Authority Ltd (ADNDRC Case No. HK-18010195) where the Complainant requested the panel to transfer the domain name at issue (<evergranderealestate.com>) from the Respondent to itself.
The original complaint was filed with the Beijing office of the ADNDRC in early 2018 and was dismissed by the original panel as [he/she] did not find sufficient proof to establish that it was implausible for Respondent to use the domain name in good faith. In the original decision, the panel also emphasized that the Complainant bore more burden of proof than the Respondent with respect to the element of bad faith stipulated in Article 4(a)(iii) of the UDRP Policy.
At the end of 2018, the Complainant re-filed a similar complaint with the HKIAC in its capacity as the Hong Kong office of the ADNDRC on the grounds that it was presenting new evidence which was unavailable in the original complaint. The Respondent submitted a petition to HKIAC, requesting the panel to dismiss the complaint. Following a prima facie review of its competence to do so, HKIAC accepted the re-filed case. In accordance with Paragraph 10(d) of the UDRP Rules, the discretion to decide fully whether a re-filed complaint can be accepted vests with the panel. The panel shall also determine the admissibility, relevance, materiality and weight of evidence.
Subsequently, the panel appointed in the re-filed case issued a procedural order requesting the Complainant to provide a list of items of fresh evidence claimed to have been introduced by the Complainant in the re-filed case. The panel adopted the Grove/Creo approach and decided that the new evidence which was not available in the original case constituted new material evidence on whether the Respondent had engaged in a pattern of conduct of registering multiple domain names by cybersquatting in respect of well-known company names in China, Japan, the United States and other parts of the world.
Case analysis regarding res judicata under the CNDRP Policy
The CNDRP Policy does not explicitly address whether a prior decision denying transfer of a domain name precludes the complainant from filing a new complaint concerning the same subject against the same respondent. Article 31 of the CNDRP Policy which was released and came into effect on 18 June 2019 (“2019 CNDRP Policy”) provides that the Panel shall conduct the proceedings in such manner as it considers appropriate according to the Rules and Supplemental Rules (“2019 CNDRP Policy Rules and Supplemental Rules”), and decide a complaint on the basis of the statements and documents submitted and in accordance with CNDRP, as well as any rules and principles of law which it deems applicable.
In Trainingmask LLC. v. Xu Jing (HKIAC Case No. DCN-1600717), the Complainant re-filed a complaint with the HKIAC in January 2017 pursuant to the CNDRP Policy which was adopted by the China Internet Network Information Center (“CNNIC”) on 21 November 2014 (“2014 CNDRP Policy”), requesting the panel to transfer the domain name at issue (<trainningmask.cn>) which was registered in June 2013 from the Respondent to itself.
The appointed panel in the re-filed case dismissed the complaint on the following three grounds.
Firstly, according to Article 2 of the 2014 CNDRP Policy, CNDRP dispute resolution service providers, i.e., HKIAC, are not suggested to accept complaints regarding domain names that have been registered for more than two years. When the Complainant submitted a re-filed complaint to the HKIAC, the disputed domain name had been registered for more than two years and thus the re-filed complaint was rejected by the panel.
Secondly, the panel also considered that the Complainant may have been in abuse of the legal process. Instead of filing a court case, the Complainant re-filed the complaint regarding the same subject to another domain name dispute resolution centre.
Thirdly, the panel, following the Grove/Creo approach, decided that the Complainant did not provide sufficient evidence to prove the third element in the original proceeding and did not provide material evidence to support its contention in its re-filed complaint. The panel therefore assumed that the Complainant was asking for a repeat of the original proceeding where the issues had already been decided albeit not in the Complainant’s favor.
The latest version of the CNDRP policy was released on 18 June 2019. The limitation of action for filing a domain name complaint in accordance with 2019 CNDRP Policy now extends to three years. For re-filed CNDRP cases, not only will the panel take into consideration the doctrine of res judicata but more importantly the registration time of the domain name at issue which might bar a complainant from re-filing a similar dispute even though fresh evidence can be proffered.
The doctrine of res judicata is an often-remarked phenomenon and a major and critical topic in civil procedure.13 In domain name proceedings, the doctrine of res judicata operates like a “circuit breaker”; it bars the abuse of legal process and saves judicial resources, reserving the consideration of re-filed cases to limited categories as defined by the Grove/Creo cases.
1. Article 4 of Uniform Domain Name Dispute Resolution Policy.
2. Article 4(a) of HKIRC Domain Name Dispute Resolution Policy.
3. Rules of Procedure of HKIRC Domain Name Dispute Resolution Policy.
4. Creo Products Inc. v. Website In Development, WIPO case D2000-0158.
5. Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703.
6. Paragraph 15(a) of Rules for Uniform Domain Name Dispute Resolution Policy.
7. Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057.
8. Evergrande Realestate Group Co., Ltd. v. Central American Domain Authority Ltd, CIETAC Case No. CN-1801135.
9. Paragraph 10(d) of Uniform Domain Name Dispute Resolution Rules.
10. Evergrande Realestate Group Co., Ltd. v. Central American Domain Authority Ltd, ADNDRC Case No. HK-18010195.
11. Trainingmask LLC. v. Xu Jing, HKIAC Case No. DCN-1600717.
12. Article 2 of China ccTLD Dispute Resolution Policy.
13. Holland, Maurice J. (1980) “Modernizing Res Judicata: Reflections on the Parklane Doctrine”, Indiana Law Journal: Vol. 55: Iss. 4.