DECISION

 

Art4Now, Inc. v. Gerald Waggoner / The Waggoner Law Firm

Claim Number: FA2312002074746

 

PARTIES

Complainant is Art4Now, Inc. ("Complainant"), represented by Benjamin W. Janke of Baker, Donelson, Bearman, Caldwell & Berkowitz, PC, Louisiana, USA. Respondent is Gerald Waggoner / The Waggoner Law Firm ("Respondent"), Tennessee, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bayouwear.com>, registered with Tucows Domains 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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 11, 2023; Forum received payment on December 11, 2023.

 

On December 12, 2023, Tucows Domains Inc. confirmed by e-mail to Forum that the <bayouwear.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 December 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2024 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@bayouwear.com. Also on December 13, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 4, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: REFILED CASE

Complainant describes this as a refiled case, a decision having been made in November 2023 in Art4Now, Inc. v. Gerald Waggoner / The Waggoner Law Firm, FA 2065343 (Forum Nov. 24, 2023). The preliminary issues which arise for consideration are (i) whether this is indeed a refiled case, and if so, (ii) whether another decision should be made applying paragraph 4(a) of the Policy.

 

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview), considered at paragraph 4.18 the question "Under what circumstances would a refiled case be accepted?" in answer to which it is stated:

 

"A refiled case is one in which a newly-filed UDRP case concerns identical domain name(s) and parties to a previously-decided UDRP case in which the prior panel denied the complaint on the merits."

 

The present proceedings can therefore be described as a re-filed case and the Panel will hereinafter refer to Art4Now, Inc. v. Gerald Waggoner / The Waggoner Law Firm, FA 2065343 as the "Original Decision".

 

The leading case on refiled cases is Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., Case No. D2011-0057 (WIPO March 15, 2011) (Sensis) where it was observed that:

 

"There is no express prohibition against refiling complaints, and the Policy does not state any explicit standards for accepting or rejecting refiled complaints for consideration by a new panel. It is conceivable that a well-funded complainant could simply refile successive complaints until it found a panel willing to order the transfer of the disputed domain name. This would not be a fair burden to impose on respondents, it would not be an efficient use of the resources of the dispute resolution service provider, and it would not promote consistency and predictability in UDRP decisions.

…

… paragraph 5(a) of the Rules … allows the panel to consider "any rules and principles of law that it deems applicable." UDRP panels have dismissed some refiled complaints after referring to widely accepted legal principles such as res judicata (preclusion of identical claims), judicial efficiency, and the fundamental fairness of not imposing on respondents the burden of replying to repetitious complaints, sometimes expressed as a principle of "natural law", "fair process", or "due process". Such principles, as well as common exceptions to the doctrine of res judicata, are found in both common law and civil law jurisdictions, and with application to civil, criminal, administrative, and arbitral proceedings…

 

…

 

The Index of WIPO UDRP Decisions, section III.C.7 ("Refiling") lists numerous decisions in which panels relied on paragraph 15(a) (sic) of the Rules to apply the principle of res judicata to refiled UDRP complaints. … 

In [Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703], panelist Sir Ian Barker applied the common law principle that, once there is a decision following a defended hearing, a judicial complaint cannot be re-litigated unless either (a) the decision is overturned on appeal; or (b) limited grounds for rehearing or reconsideration have been established. Such grounds include the following:

- serious misconduct by a judge, juror, witness or lawyer;

- perjured evidence;

- the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; and

- a violation of "natural justice" or due process.

 

On the discovery of new evidence, Sir Ian Barker referred to the leading English Court of Appeal case of Ladd v. Marshall [1954], 3All ER 745, for the following criteria:

- the new evidence could not have been obtained with reasonable diligence for use at trial;

- the new evidence must be material (i.e., it would probably have an important influence on the result);

- the new evidence must be credible, although it need not be incontrovertible."

 

Paragraph 4.18 the WIPO Overview reduces these early decisions to summary form:

 

"As the UDRP itself contains no appeal mechanism, there is no express right to refile a complaint; refiled complaints are exceptional. … Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a 'without prejudice' basis."

 

The Panel observes, firstly, that the Original Decision was not made on a "without prejudice" basis. Complainant states that the Original Decision

 

"… was denied by the [p]anel based on a finding that Complainant failed to establish bad faith registration. ... the previous [p]anel appears to have questioned Complainant's rights in the BAYOUWEAR Mark based on the fact that the Registration Certificates attached thereto listed ProCreations Publishing Company as the registering entity, notwithstanding Complainant's assertions regarding its current ownership of the BAYOUWEAR Mark; its identification of the federal trademark registration numbers for which such ownership is claimed; and its attachments of corresponding Registration Certificates for each of the above-referenced marks. Complainant accurately asserted its ownership interest in the BAYOUWEAR Mark and provided ample evidence regarding the existence and validity of the corresponding trademark registrations to the previous Panel."

 

The limited circumstances in which UDRP panelists have accepted refiled cases described by the WIPO Overview do not include challenges to legal findings. Whether or not the Original Decision questioned Complainant's trademark rights is therefore not open to reconsideration. In any event, the Panel observes that the Original Decision states that by reason of the "dispositive finding on the issue of registration and use in bad faith, the [p]anel declines to address the question of whether the Complainant has rights in the BAYOUWEAR Mark."

 

The Complaint goes on to state that:

 

"There are several materially relevant developments that warrant a closer look by the Panel … the gravamen of the reasons warranting this refiling is the overwhelming and extraordinary new material evidence concerning Respondent's bad faith and lack of legitimate interest in the Disputed Domain, which would not have become available to Complainant during normal due diligence in preparation for the original UDRP proceeding."

 

That material is, first, Complainant's discovery "that Respondent has a history of engaging in dishonesty and misconduct and was recently suspended from the practice of law for two (2) years by the Supreme Court of Tennessee", and secondly, Complainant's discovery of "at least 101 other domain names registered in Respondent's name. The sheer number of other domains associated with an individual may not be probative of malevolence but that same cannot be said of Respondent's claim to domains as preposterous as <harvardlawlibrary.com> and <sandalscasino.com>."   

 

Complainant's submission is that "[t]he newly-discovered evidence regarding Respondent's history of misconduct and overwhelming serial domain registrations undoubtedly supports a finding of bad faith and continuous modus operandi on the part of Respondent and warrants reconsideration of the instant dispute."

 

The Panel is not so convinced. Of the handful of exceptional circumstances identified by the WIPO Overview, it is only the issue of whether new and material evidence is presented that was previously unavailable to Complainant which arises for consideration. The majority of the "recently-discovered domain names" were extant before the Original Decision. Likewise, the decision of the Tennessee Supreme Court's was published in 2023 before the Original Decision but, in any case, the matter concerned violation of legal professional conduct and lacks sufficient nexus to the creation of the disputed domain name.  In terms of the criteria laid out in Ladd v. Marshall, the Panel finds that the new evidence could have been obtained with reasonable diligence and included in the first complaint and, in the case of the disciplinary ruling, also lacks sufficient materiality.

 

The Panel finds that Complainant has not met its burden of demonstrating that the re-filed case falls within the limited grounds on which re-filed cases should be entertained.  In Sensis, the panel stated:

 

"The Policy is designed to provide an administrative procedure for the speedy and inexpensive resolution of a particular kind of dispute, offering limited remedies that are not exclusive of recourse to judicial proceedings."

 

DECISION

It is Ordered that the <bayouwear.com> domain name REMAIN WITH Respondent.

 

 

 

Debrett G. Lyons, Panelist

Dated: January 9, 2024