Intellectual Property

Application of Res Judicata in Refiling a Complaint

Refiling a complaint is permissible under limited circumstances, most notably following an earlier dismissal on the merits, but also by order granting leave to replead. In this Comment I will focus on the former and leave the latter for another time. The rules for repleading a UDRP complaint are similar to those found in civil practice. To succeed in getting a second chance, the complainant must be able to show that it is not barred by res judicata. It is useful to review the test and how it is applied. In Assurant, Inc. v. Tom Baert, FA 893437 (Nat. Arb. Forum March 5, 2007) (“Assurant 1”) the Respondent proved that it had made demonstrable preparations to use the domain name. In a refiled complaint, the Complainant alleged that the Respondent was a serial cybersquatter, FA0802001143728 (Nat. Arb. Forum June 25, 2008) (“Assurant 2”). The Panel in Assurant 2 summarized the Complanant’s burden as follows:
[it] must show that there is a development of new, credible, material evidence which was not foreseen at the time of the previous dispute. 
The test for refiling a complaint under the Policy, first set forth in Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd., D2000‑0703 (WIPO November 10, 2000), followed well settled principles in a court of law. To qualify for what in a civil action would be a reargument or renewal, the complainant must show 1) serious misconduct by a judge, juror, witness or lawyer; 2) perjured evidence being offered to the Court; 3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and 4) a breach of natural justice /due process. “The integrity of the ICANN Policy and procedure requires that if a reconsideration of the same Complaint is to be entertained, there should be proof that one of the strict grounds discussed in this decision has been made out.” The Panel in Grove Broadcasting concluded:
Applying the test for a retrial on the ground of new evidence having been discovered, the Panel holds that there has been no attempt to satisfy the requirement that the evidence could not have been obtained with due diligence at the time when the first Complaint was filed. The Complainant, having elected to initiate the proceeding without proper documentation or proof, with no certainty of obtaining the indulgence given to it by the Panelist in the first case (D2000-0158), has to take the consequences.
Although the burden is high, complaints that show proof of acts occurring subsequent to the decision in the original pass the jurisdictional test. Creo Products Limited v. Website in Development, D2000-1490(WIPO January 19, 2001).   A re-filed complaint is successful when it “includes both new acts of the Respondent occurring since the first decision and fresh evidence not available prior to the first decision.” In Legal & General Group Plc v. Image Plus, D2003‑0603 (WIPO September 23, 2003) [prior decision with dissent is reported at D2002-1019 (WIPO December 30, 2002)], “[t]he new acts relate to the Respondent changing the Respondent’s website to include new meta‑tags incorporating Complainant’s trademarks.”  
Other re-filed complaints have been accepted when, for example, the change of condition is the registration of the complainant’s trademark. Alpine Entertainment Group, Inc. v. Walter Alvarez, D2007-1082 (WIPO December 4, 2007).

The lesson from these cases is that if the complainant cannot get it right the first time, and there are no factual changes of circumstance, it will not get a pass for a second try.