Assurant, Inc. v. Tom Baert
Claim Number: FA0802001143728
PARTIES
Complainant is Assurant, Inc. (“Complainant”), represented by Brian M. Davis, of Alston
& Bird, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assurant.mobi>, registered with GoDaddy.com, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 12, 2008.
On February 11, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <assurant.mobi> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 February 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 2008 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 postmaster@assurant.mobi by e-mail.
An electronic Response was received on March 12, 2008. The Response was deficient under ICANN Rule 5 as a hard copy of the Response was not received on or before the Response deadline. However, the Panel has considered the substance of this response.
On
March 25, 2008, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed David S. Safran as Panelist.
On March 26, 2008, an e-mail communication was received, which indicated that the Respondent was too ill to prepare a response and requesting that the file of the prior proceedings between the parties concerning the domain at issue here be provided to the Panel.
On April 1, 2008, an e-mail request for permission to prepare and file a response was received that was not in compliance with National Arbitration Forum’s Supplemental Rule 6(a).
On
April 4, 2008, this Panel issued an Order requiring Complainant to submit
additional Evidence.
On
May 2, 2008, a timely response to the Panel’s Order was received and provided
to the Panel.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that subsequent to the prior decision between these parties concerning the subject domain <assurant.mobi> (FA 893437; hereafter, the “Prior Decision”), decisions were issued against Respondent in three cases and this fact demonstrates that Respondent has a practice of registering domains corresponding to well know trademarks, and that this evidence goes to the heart of the basis on which the panel in the Prior Decision found in favor of Respondent, such that res judicata should not apply.
B. Respondent
No response was received from Respondent.
C. Additional Submissions
Complainant reiterated its position set forth in the Complainant submitted declaration evidence showing that on the date that Respondent registered the domain at issue here, Respondent also filed for registration of numerous domain names corresponding to the tradenames or trademarks of various well known companies.
No response was received from Respondent.
FINDINGS
In the three cases cited by Complainant as justifying refilling, the Panels found that the Respondent knew or should have known of the rights of the complainant. However, in the prior decision concerning the subject domain, the panel found that such was not the case with respect to this Respondent relative to this Complainant. No error in the facts relating to the present parties, as found by the prior panel, are evidenced by these three cases which this Panel finds to be distinguishable on their facts relative to the facts submitted for consideration in the prior proceeding between these parties.
The declaration evidence was available at the time of the prior proceeding and could have been presented in for consideration by the prior panel in prior proceeding between these parties concerning the subject domain.
DISCUSSION
A previous dispute between
Complainant and Respondent was brought before a panel under the UDRP in
2007. See Assurant, Inc. v. Tom Baert, FA 893437 (Nat. Arb. Forum Mar. 5,
2007). In that proceeding, the panel
held that Complainant had satisfied Policy ¶ 4(a)(i), but failed under Policy
¶¶ 4(a)(ii) and (iii). The panel found
that Respondent had demonstrated adequate plans for a use for the <assurant.mobi> domain name in connection with a bona fide
offering of goods and services, which Respondent estimated would take “one to
four years” to develop. The panel also
held that the disputed domain name was not registered in bad faith, both based
on the future offering of goods and services through the disputed domain name’s
website, as well as by virtue of the generic nature of the disputed domain
name. The panel also took notice of the
fact that while Complainant owns a trademark registration for ASSURANT with the
Benelux trademark authority, Complainant presented no evidence that it uses its
mark in
Past panels have held that the burden on a party attempting to re-file a claim previously decided under the UDRP is high and that the party must show that there is a development of new, credible, material evidence which was not foreseen at the time of the previous dispute. See Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) (noting, and subsequently applying to the UDRP, the four common-law grounds for the rehearing or reconsideration of a previously filed decision as (1) serious misconduct on the part of a 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) (Emphasis added.); see also Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) (finding that the burden of establishing that a second complaint should be entertained is “high”).
The Panel finds that the other decisions regarding Respondent do not influence or relate to Respondent’s use of the <assurant.mobi> domain name, and are distinguishable on the very facts that led the prior panel to rule that Complainant had satisfied Policy ¶ 4(a)(i), but failed under Policy ¶¶ 4(a)(ii) and (iii), and thus, would not necessarily have led to a decision in Complainant’s favor had they been issued before the prior proceedings. As such, the Panel finds that the three subsequent decisions do not constitute new information sufficient to warrant the re‑filing of the Complaint.
No reason has been given why the search which revealed the evidence presented by declaration, which was only first submitted in response this Panels order, and now used to support a finding of bad faith, could not have obtained and presented in the original proceedings. See Am. Culinary ChefsBest v. Vertical Axis, Inc, FA 1082259 (Nat. Arb. Forum Nov. 28, 2007) (“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.”). Thus, the Panel finds that Complainant has failed to meet its “high burden” and cannot rely on evidence that it could have presented, but did not present, in the original proceeding, and the fact that such evidence might likely have resulted in a decision in Complainant’s favor had it been presented in the original proceeding cannot justify re-doing of its original failure via this re-filing. See TABCORP Holdings Ltd. v. Hertzberg, D2001-1052 (WIPO Dec. 3, 2001) (re-filing not permitted, as the complainant failed to meet its “high burden” and therefore could not “re-do [its] failure in the original proceeding to carry its burden of proving bad faith registration of <tabcorp.com>”). As a result, the Panel finds that Complainant’s requested relief is precluded on the basis of res judicata.
DECISION
Having found that Complainant’s re-filing is precluded on the basis of res judicata, the Panel concludes that this re-filing be dismissed and therefore relief shall be DENIED.
Accordingly, it is Ordered that the <assurant.mobi> domain name be Retained by Respondent.
David S. Safran, Panelist
Dated: June 25, 2008
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