28th Nov 2007
National Arbitration Forum
American Culinary ChefsBest v. Vertical Axis, Inc c/o Domain Adminstrator
Claim Number: FA0709001082259
Complainant is American Culinary ChefsBest (“Complainant”), represented by Jonathan Swartz, of Thelen Reid Brown Raysman & Steiner LLP, 101 Second Street, Suite 1800, San Francisco, CA 94105. Respondent is Vertical Axis, Inc c/o Domain Adminstrator (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chefsbest.com>, registered with Nameview, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Q. Todd Dickinson, David E. Sorkin, and Mark McCormick, Chair, Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2007.
On October 1, 2007, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <chefsbest.com> domain name is registered with Nameview, Inc. and that the Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 31, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 31, 2007.
An Additional Submission was received from Complainant on November 10, 2007. The submission did not comply with Rule 7 because payment was received after the deadline. Furthermore, Complainant has not alleged the presence of any exceptional circumstances that would warrant consideration of additional submissions. The Panel has determined not to consider the Additional Submission.
On November 14, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Q. Todd Dickinson, David E. Sorkin, and Mark McCormick as Panelists.
ADDITIONAL PROCEDURAL HISTORY
This is a re-filed Complaint. It is a Complaint about a domain name that was the subject of a previous complaint filed by the same Complainant in May 2007 against the same Respondent. In American Culinary ChefsBest v. Vertical Axis, Inc. c/o Domain Administrator, No. FA0705000991959 (NAF August 22, 2007), the Panel denied relief because of Complainant’s failure to prove bad faith registration and use of the <chefsbest.com> domain name pursuant to Policy ¶4(a)(iii). The Panel held that Complainant had only submitted an allegation of bad faith in an unsigned Complaint without any factual support or documentation sufficient to establish bad faith under Policy ¶4(b).
Complainant subsequently filed the present Complaint. Complainant recited that its counsel inquired of the National Arbitration Forum Dispute Case Coordinator regarding whether a re-filing to correct the “shortcomings” in the original Complaint was barred under Forum rules and was informed that the rules did not prohibit a new complaint from being filed. Complainant signed the re-filed Complaint and, in support of its allegation of bad faith, Complainant asserted that a search through Mark Monitor on or about August 24, 2007 demonstrated that Respondent has registered and maintains well over 7,000 domain names, some of which appear to be confusingly similar with known trademarks. Complainant alleges that each of these domain names points to a webpage consisting of the same pay-per-click search engine and/or links advertising goods or services in competition with the legitimate trademark holder. Complainant relies on this evidence as support for its allegation that Respondent has engaged in a pattern of infringing famous trademarks demonstrating his bad faith in similarly registering the <chefsbest.com> domain name.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: RES JUDICATA
Respondent contends that the Complaint should be dismissed because it does not constitute a “truly new action” within the meaning of such cases as Trustees of the University of Pennsylvania v. Motherboards.com, et al., No. D2007-0757 (WIPO Oct. 5, 2007) and Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001).
Panels in prior cases have recognized four common-law grounds for the rehearing or reconsideration of a previously filed decision: (1) serious misconduct on the part of the judge, juror, witness or lawyer; (2) perjured evidence having been offered to the court; (3) the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or (4) a breach of natural justice. See Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000). In addition, if a complaint alleges new conduct, the complaint may constitute a truly new action and not be barred. See Creo Prods. Inc. v. Website in Dev., supra. Otherwise, unless the complaint satisfies one of the four common-law grounds for the rehearing or reconsideration of a previously filed decision, the refiled complaint is barred by the doctrine of res judicata. Under that doctrine, a valid and personal judgment rendered in favor of the defendant bars another action by the plaintiff on the same claim. See Restatement (Second) of Judgments Second §19 (1982). Under the doctrine, an adjudication in a former suit between the same parties on the same claim is final as to all matters which could have been presented to the tribunal for determination. A party must litigate all matters growing out of its claim at one time and not in separate actions.
Complainant does not identify any of the commonly recognized common-law grounds for obtaining rehearing or reconsideration of a previously filed decision, nor does Complainant assert this is a truly new action. Complainant does assert that the Mark Monitor report showing Respondent’s more than 7,000 domain name registrations was “not readily available to Complainant at the time of the filing of the first complaint.” (Swartz Aff. ¶4). Notably, Complainant does not allege or attempt to prove that this information constituted evidence which could not have been reasonably foreseen or known at trial. Instead, Complainant cites Jones Apparel Group Inc. v. Jones Apparel Group.com, Case No. D2001-1041 (WIPO Oct. 16, 2001). The Jones Apparel case involved a re-filed complaint after the Complainant’s initial Complaint was denied because of the Complainant’s failure to adequately plead or prove trademark rights in the Jones Apparent Group trademark. The Jones Apparel panel determined that there was no prejudice to the respondent in allowing the filing of the second complaint. The panel held that the re-filed complaint would be entertained when:
· The first complaint failed for want of evidence that the complainant could and should have properly submitted in showing trademark rights;
· The panelist in the first complaint did not invite the complainant to rectify the omission under Rule 12;
· But at the same time indicated that “but for” that omission the panelist would have found against a clearly abusive respondent; and
· The respondent failed to respond either to the first complaint or to the re-filed second complaint.
Even assuming the Panel in the present case would follow the decision in Jones Apparel Group Inc., the present situation is plainly distinguishable. The Panel on the first Complaint did not indicate that but for Complainant’s procedural and evidentiary omissions, the Panelist would have found against the Respondent. In addition, this is a situation where Respondent did respond both to the first Complaint and to the re-filed Complaint.
Complainant has utterly failed to establish any ground to warrant rehearing or reconsideration of its Complaint. No basis exists in the record for finding that the Complainant could not have made the same search of the Mark Monitor report prior to bringing the first action that it made prior to bringing the second action. None of the common-law grounds exist, and Complainant has not alleged or shown that this is a “truly new action.”
The Panel finds that the Complaint is barred by the doctrine of res judicata.
REVERSE DOMAIN NAME HIGHJACKING
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name highjacking by initiating the present dispute. Under the circumstances here, the question is whether Complainant lacked a colorable claim but nevertheless refiled the Complaint as a means of attempting to wrest the disputed domain name from Respondent. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004). Before re-filing the Complaint, Complainant inquired of the Forum case coordinator regarding any prohibition in the Rules against doing so and was told none existed. Moreover, in re-filing the Complaint, the Complainant relied on Jones Apparel Group, Inc., supra, as authority for allowing a complaint to be refiled in unique circumstances even when the common-law grounds do not exist and the action is not new. Under this record, the Panel finds, by majority vote, that Respondent has not established that Complainant acted in bad faith in re-filing the Complaint. See Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001).
It is ordered that the Complaint be and is dismissed. Respondent’s claim of reverse domain name highjacking is denied.
Q. Todd Dickinson, David E. Sorkin and Mark McCormick, Panelists
Dated: November 28, 2007
National Arbitration Forum