Walter Arnstein, Inc. d/b/a The Natural Sapphire Company v. TransPacific Software Pvt. Ltd.
Claim Number: FA1106001392515
Complainant is Walter Arnstein, Inc. d/b/a The Natural Sapphire Company (“Complainant”), represented by Brett E. Lewis, New York, USA. Respondent is TransPacific Software Pvt. Ltd (“Respondent”), represented by Prashant Telang of TransPacific Software Pvt. Ltd, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <naturalsapphirecompany.com>, registered with Tucows Inc.
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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2011; the National Arbitration Forum received payment on June 7, 2011.
On June 7, 2011, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <naturalsapphirecompany.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@naturalsapphirecompany.com. Also on June 8, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 21, 2011. A timely Additional Submission was received from Complainant on June 27, 2011. A timely Additional Submission was received from Respondent on July 1, 2011.
On June 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
PRIOR PROCEEDING
On May 12, 2011, in Walter Arnstein, Inc. d/b/a The Natural Sapphire Co. v. TransPacific Software Pvt. Ltd., FA 1381438 (Nat. Arb. Forum May 12, 2011), a prior panel denied relief to this same Complainant in a dispute with the same Respondent regarding the same domain name. That panel denied relief on the basis of the existence of a “business and/or contractual dispute between the two companies that falls outside the scope of the UDRP.” Although it did not reach the issue, the panel additionally noted a concern that “Complainant ha[d] not satisfied Policy ¶ 4(a)(i) because it ha[d] failed to clearly establish rights in a trademark. The evidence concerning the existence of a common law mark is quite weak.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant reiterates the factual contentions presented in Walter Arnstein, Inc. d/b/a The Natural Sapphire Co. v. TransPacific Software Pvt. Ltd., FA 1381438 (Nat. Arb. Forum May 12, 2011).
Complainant further contends that new evidence of bad faith registration and use, unavailable to the prior panel, has come to light. Specifically, Complainant makes claims regarding (1) hits diverted away from Complainant’s website by Respondent, through use of the disputed domain name; (2) offers by Respondent to sell the disputed domain name to a third party at a premium; and (3) changes to links to Claimant’s website on Wikipedia, a publicly-editable encyclopedia, allegedly made by Respondent.
B. Respondent
Respondent reiterates its denials of Complainant’s prior contentions, and additionally denies Complainant’s new contentions regarding bad faith registration and use.
Respondent contends that Complainant’s new evidence regarding bad faith registration and use is insufficient to justify a new proceeding under the UDRP, and that relief should be denied on that basis.
C. Additional Submissions
Complainant timely filed an Additional Submission to address the Response provided by Respondent. In its Additional Submission, Complainant rebuts Respondent’s denials of Complainant’s new contentions as to bad faith registration and use. Additionally, Complainant asserts that the panel in the prior proceeding erred by over-crediting allegedly-unsworn statements by Respondent. Finally, Complainant contends that the Panel is not bound by the prior panel’s decision.
The panel finds that Complainant’s plea for relief should be denied as duplicative of the claim in Walter Arnstein, Inc. d/b/a The Natural Sapphire Co. v. TransPacific Software Pvt. Ltd., FA 1381438 (Nat. Arb. Forum May 12, 2011).
A range of views has been expressed by prior Panels regarding the precise burden facing a complainant filing a duplicative complaint. See Assurant, Inc. v. Baert, FA 1143728 (Nat. Arb. Forum June 25, 2008) (“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.”); Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan. 19, 2001) (“First, the burden of establishing that the Refiled Complaint should be entertained under the Uniform Policy rests on the refiling complainant. Secondly, that burden is high. Thirdly, the grounds which allegedly justify entertaining the Refiled Complaint need to be clearly identified by the refiling complainant.”); Grove Broad. Co. Ltd. v. Telesystems Commc’ns Ltd., D2000-0703 (WIPO Nov. 10, 2000) (applying common-law rules permitting refilling on the basis of new evidence where “the evidence could not have been obtained with reasonable diligence for use at the trial; the evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive; and the evidence must be such as is presumably to be believed, or in other words, it must be apparently credible, although it need not be incontrovertible."). Nonetheless, under any of these views, the complainant fails to meet such burden if it fails to offer new evidence regarding the grounds upon which the prior panel denied relief. Here, the only new evidence provided by Complainant relates to the issue of bad faith in registration and use. As that issue was not the basis of the prior panel’s decision, Complainant fails to meet its burden.
Further, the prior panel’s choice regarding the weight to give to Respondent’s allegedly-unsworn statements is not subject to collateral attack in this proceeding. This is not an appeal. Nonetheless, the Panel finds that the annexes provided by Respondent in this case are sufficient to support the prior panel’s finding that this dispute amounted to “a business and/or contractual dispute between the two companies that falls outside the scope of the UDRP,” precluding decision under the UDRP.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
For the reasons stated above, the threshold principles applicable here are those relating to the re-filing of a complaint in a matter that has previously been resolved by a Panel under the Policy. Under those principles, the Complainant here has failed to show that there is new evidence material to the issues as to which the prior Panel resolved the dispute in favor of Respondent.
Accordingly, this Panel finds that this case shall be dismissed.
Having determined that the Complaint in this proceeding states claims duplicative of those previously asserted in Walter Arnstein, Inc. d/b/a The Natural Sapphire Co. v. TransPacific Software Pvt. Ltd., FA 1381438 (Nat. Arb. Forum May 12, 2011), and that Complainant has failed to present new evidence regarding the issues on which the panel in that case based its decision, the Panel concludes that relief shall be DENIED AND THE CASE DISMISSED.
Michael A. Albert, Panelist
Dated: July 20, 2011
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