Issue of 're-filing' of identical complaint under PARL clarified

Italian company Cool Srl, which sells watches under the mark TOYWATCH, has failed to obtain the transfer of the domain names '' and '' (Cases DFR2009-0034 and DFR2010-0005, January 13 and April 2 2010).
Cool is clearly keen on recuperating the domain names, as it filed not one, but two complaints, before the World Intellectual Property Organization (WIPO) under the alternative dispute resolution (ADR) policy for '.fr' and '.re' domain names, the Procédure Alternative de Résolution des Litiges (PARL).
The domain names at issue were registered on May 1 2008 by Jean Louis Haddad. They first pointed to a website criticizing the quality of the Toywatch watches. Haddad contacted Cool in October 2009 and offered to sell the domain names. As a response, Cool sent a cease and desist letter which was not adhered to by Haddad. Instead, Haddad sent an insulting message to Cool and modified the content of the website, adding some reproductions of Cool's watches. As a result, Cool filed a first complaint before WIPO under the PARL.
The PARL is a variation of the Uniform Domain Name Dispute Resolution Policy (UDRP). Under this procedure, the complainant must prove that the domain name is either infringing its rights, or violating French or EU competition rules. An infringement of third parties' rights occurs when a domain name is identical, or confusingly similar, to a name in which French or European trademark rights exist, unless the respondent can prove that it has a right or legitimate interest in the domain name, or always acted in good faith.
On January 13 2010 a first panel refused to transfer the domain names. Cool asserted that it was the owner of the Community trademark (CTM) TOYWATCH and the purchaser of international trademark registrations belonging to another company. However, the panel found that the CTM had been filed after the registration of the domain names and was not yet registered. As to the international trademark registrations, the domain names had been registered prior to the contract for the transfer of the trademark rights being executed and registered before the French Trademark Register. The panel underlined that, under French law, the purchaser of a trademark right cannot enforce it against a third party if the contract has not been registered before the register. As a result, the panel considered that Cool had no previous trademark rights in the term incorporated in the domain names.
As far as the violation of the competition rules was concerned, the panel considered that Haddad was making a non-commercial use of the domain names and that the freedom of speech principle should override any trademark rights, especially since they were subsequent to the registration of the domain names.
However, the panel stressed that, had Cool provided evidence of the registration of the contract by which the trademark rights were transferred to Cool at the time the complaint was filed, the finding could have been different with regard to the infringement of trademark rights.
Taking this into account, Cool filed a new complaint before WIPO in order to recuperate the domain names once the contract was registered. As a result, the panel first had to consider whether the new complaint could be examined notwithstanding the previous decision.
The panel underlined that there was no information within the ADR rules which addressed the binding effect of a decision under the PARL procedure and how to deal with the "re-filing" of a complaint about the same domain name, regarding the same facts and between the same parties. The panel pointed out that this was an important issue that the parties, regrettably, did not address in the new complaint.
The panel thus decided to take into consideration the national laws that could apply to the matter. The panel analyzed whether they could use the French Civil Code, which, under Article 1351, deals with the binding effect of a judgment, and provides that:
"the force of res judicata takes place only with respect to what was the subject matter of a judgment. It is necessary that the thing claimed be the same; that the claim be based on the same grounds; that the claim be between the same parties and brought by them and against them in the same capacity."
However, according to the panel, this principle could apply only to judicial decisions, arbitration or transactions. A decision resulting from a PARL procedure was a technical decision and could be considered neither as a judgment nor as an arbitration. The panel concluded that the technical decision, as a result, could not have a binding effect under the Civil Code.
The panel went on to analyze WIPO decisions that addressed the issue of 're-filing'. Many panels, in the course of UDRP procedures, have analyzed this issue, therefore providing a large number of precedents. However, the procedure in question being a country-code top-level domain (ccTLD) ADR, the panel first had to define whether they could follow the positions of UDRP panels.
Using decisions on ccTLD domain names which applied the views of the UDRP panels, the panel continued analyzing the views expressed in UDRP decisions. UDRP panels have found that, in principle, a new identical complaint should be denied and considered inadmissible, with the exception of specific and very limited cases. The complainant must make sure that it fulfils certain conditions to see its new complaint admitted. Among the elements enabling the admission of a new complaint, the panels usually considered new facts that had appeared after the filing of the first complaint and could have an impact on the decision. The panel in the present case quoted a decision where it was decided that trademarks not registered at the time of filing of the first complaint, but subsequently registered, could constitute a new element which could have an impact on the decision (see Alpine Entertainment Group Inc v Alvarez (Case D2007-1082)).
Taking this opinion into consideration, the panel compared it to the present case and the elements of the new complaint. The panel noted that the parties to the new complaint were identical, as was the object matter of the complaint - namely, the recuperation of the domain names at issue. Moreover, the panel explained that the grounds on which the action was based were the same (namely, Cool was once again asserting that the registration or use of the domain names was a case of unfair competition) and that the elements supporting the allegations were identical to those presented in the first complaint. The only difference was the effective registration of the contract transferring the trademark rights to Cool, with such rights becoming enforceable against third parties.
The panel decided to apply the view expressed in Alpine and considered that the effective registration of the international trademarks constituted a new fact which occurred after the filing of the first complaint and which could have an impact on the issue of the case. As a result, the panel agreed to review the new complaint, and added that it was supported in this action by the fact that the panel in the previous complaint seemed to have kept a window open for a later complaint.
However, the panel noted that any new complaint would be considered only in the light of the transfer of the international trademark registrations and the rights that these conferred to Cool. The panel was clear that no other circumstances should be taken into account and, therefore, the new complaint would be decided within the limits set out by the panel in the previous complaint. The panel underlined that this was essential to prevent the possibility for unhappy parties to systematically file new complaints, and that second panels requested to review a previous decision should accept and incorporate the findings of the previous panels.
As a result, the panel pointed out that it would not review whether the registration or use of the domain names infringed French or EU competition regulations, as this had already been addressed in the first decision.
This clearly established, the panel continued further into the analysis of whether the registration or use of the domain names infringed Cool's trademark rights. The panel found that Cool was now the owner of a registered international trademark which was filed before the registration of the domain names. Taking into consideration the requirements under the EU trademark law, the panel found there was a clear similarity between the trademarks and the domain names.
Not elaborating further on this point, the panel considered what had been decided by the previous panel regarding the use of the domain names. First, the previous panel had found that Haddad was not making a commercial use of the domain names. As the content of the website had not evolved since the last complaint, the panel refused to review the similarity between the domain names and the products or services. Second, the previous panel had considered that Haddad was making an informational use of the domain names which could not be qualified as an act of counterfeiting. The previous panel had considered that freedom of speech should prevail, and the panel in the present case followed this view.
However, in the second complaint, Cool alleged that the information contained on the website was fallacious as to the origins and the cost of creation of the products. Unfortunately, the panel felt that, as this point could - and indeed should - have been introduced in the first complaint, this argument could not be considered in this complaint. The rationale for this approach was that this was not a new element that had been introduced since the first complaint, as the website content had not been modified since this time.
As a result of all these elements, the panel concluded that there was no infringement of Cool's trademark rights. The panel was bound by the findings of the previous panel and rejected Cool's request.
This decision clarifies the conditions applicable to the 're-filing' of an identical complaint under the PARL. The panel clearly sought to provide a decision which could be used as a reference point by future panels dealing with the same kind of question. The decision plainly attempts to give guidance on this area and clarify under what circumstances a complainant may file twice under the PARL for the same domain name.
David Taylor, Hogan Lovells LLP, Paris

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