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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Bravissimo -v- Gander [2004] DRS 1295_Appeal (27 February 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1295_Appeal.html Cite as: [2004] DRS 1295_Appeal |
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Parties
Complainant:
Bravissimo Limited
UK
Respondent:
Anna Gander
UK
Domain Name
BRAVISSIMO.CO.UK
Procedural Background
On 18 October 2002 the Complainant lodged a Complaint (not the Complaint the subject of this Appeal) against the Respondent in relation to the Domain Name. The Respondent did not respond.
On 15 December 2002 the duly appointed expert, Sallie Spilsbury, issued a Decision in favour of the Respondent. The Complainant did not appeal.
On 25 September 2003 this Complaint ("the Complaint") was lodged with Nominet in accordance with the Dispute Resolution Service Policy ("the DRS Policy") and hard copies of the Complaint were received in full on 26 September 2003.
On 4 November 2003 (following the grant of an extension of time for filing the response) a Response was received by Nominet by email.
On 13 November 2003 the Complainant filed a Reply.
On 15 December 2003 Mr James Bridgeman was selected as the Expert having confirmed his independence and willingness to act.
On 30 December 2003 Nominet received the Expert's Decision in which he held that "the Complaint should be refused without making any determination on the merits of the Complainant's case".
On 8 January 2004 the Complainant lodged this Appeal.
On 16 January 2004 the undersigned Panellists, Tony Willoughby, Clive Thorne and Ian Lowe were appointed to form the Panel of Appeal ("the Panel"), all three having confirmed their independence and willingness to act.
On 20 January 2004, following the procedure adopted in previous appeals under the DRS Policy, the Panel invited the Respondent, should she wish to do so, to submit a further submission.
On 4 February 2004 the Respondent submitted a further submission in response to the Complainant's Appeal.
Factual Background
The Facts were set out in the Expert's Decision and were substantially as follows:-
The Complainant was incorporated under the Companies Act 1985 on 10 February 1997.
The Complainant's predecessor had commenced trading as a mail order business on 9 January 1995. The Complainant is a supplier of lingerie and swimwear for large busted women. It has since built a substantial business. By 1999 the Complainant had opened a retail premises and established a website at
The Domain Name was registered by the Respondent on 24 March 1998. At the time of registration of the Domain Name, the address provided by the Respondent was 31-33 Park Road, Teddington, Middlesex, TW11 OAB. At that time, this address was also the registered office of a company known as Bust Stop Retail Limited ("Bust Stop") that carried on a mail order and retail business from that address.
The Respondent has stated in a letter to Nominet UK, dated 10 August 1999, that she registered the Domain Name for a future project to promote Italian films on the Internet. Up to the date of the Complaint the Respondent had not established any website at the address of the Domain Name.
At the time that she registered the Domain Name, the Respondent held a one per cent shareholding in Bust Stop in which the main shareholding was held by other members of her family. Bust Stop was a company incorporated in June 1994 and dissolved on 30 January 2001. Bust Stop sold products similar to and in competition with the Complainant.
There was a history of ill feeling between the Complainant and Bust Stop.
In 2002 the Complainant brought unsuccessful proceedings under the DRS Policy against the Respondent claiming that it was entitled to the transfer of the Domain Name: Bravissimo Limited v. Anna Gander (DRS 00661, 15 December 2002). Surprisingly no mention of these earlier proceedings was made by the Complainant in the Complaint.
In those unsuccessful proceedings the expert held that the Complainant had established on the balance of probabilities that it had rights in respect of the name or mark BRAVISSIMO which was identical or similar to the Domain Name but that the Complainant had not proved on the balance of probabilities that the Domain Name was an Abusive Registration in the hands of the Respondent for the purposes of the DRS Policy.
The Decision under Appeal
In coming to her decision, the expert in case number DRS00661 observed that while the Complainant had registered trade mark rights sufficient to overcome the first hurdle under paragraph 2 of the Policy, the Respondent's registration of the Domain Name pre-dated the Complainant's trade mark registration. Moreover, a bare assertion was an insufficient basis for a finding of bad faith. In the result, the complaint failed. As indicated above, the Complainant did not appeal that decision.
In lodging this Complaint (DRS01295) the Complainant brought forward a considerable amount of further material to show that the Complainant was incorporated in 1997 to take over a pre-existing business which had commenced in January 1995, that in its first year of operation the business had a turnover of in excess of £134,000 and that currently it has an annual turnover of in excess of £10 million. This further evidence showed that by the time the Respondent registered the Domain Name the Complainant had probably acquired common law rights in respect of the name BRAVISSIMO. The further evidence also substantiated what had previously been a bare assertion, namely that the Respondent's address at the time of registration of the Domain Name was the registered office of Bust Stop, a former competitor of the Complainant. Further, the evidence shows that the Respondent was a shareholder (albeit a very small shareholder) in Bust Stop. Finally, the evidence also included two matters relevant to the issue of abusive registration. First, correspondence was exhibited dating back to August 1994 prior to the commencement of the business of the Complainant's predecessor, demonstrating that at that time Bust Stop was making efforts to dissuade suppliers from supplying the Complainant's predecessor. Second, the evidence includes a letter dated 9 November 2003 from Robert Spindley, a supplier's representative between 1991 and 2000 who supplied both the Complainant and Bust Stop. The letter contains the following paragraph:-
"I believe Bust Stop purchased the bravissimo domain name at the time to prevent them being able to utilise this media and quite openly spoke about this to me as though it were part of their business strategy."
It is certainly possible that had this further evidence been lodged with the earlier complaint, it might have satisfied the expert that the Respondent's purpose in registering the Domain Name was abusive. If it were not abusive, it was an extraordinary coincidence that the Respondent should have selected for her domain name the trade mark of a competitor of a business in which she was a shareholder and which, as she conceded, was run by other members of her family.
However, the Expert declined to assess the merits of this new evidence. In the Response, the Respondent drew attention to the fact of the earlier Complaint. The Complainant makes no mention of it in the Complaint. The Respondent admitted that she had registered the Domain Name using the address of her sister's home, where she was then staying. [There is a factual dispute in that the Complainant claims that the address was the registered office of Bust Stop and the site of its mail order business and not the home address of either of the Respondent's sisters.] The Respondent further admits that her sisters ran the Bust Stop business and held 96% of the shares in the company. She denies any abusive intent and says that she had proposed to use the Domain Name to promote "an internet based video line dedicated to old classic or adult Italian films…".
In its Reply, the Complainant dealt with the earlier decision as follows:-
"5.1 At paragraph 6 of the Reply, the Respondent makes much of the decision of the Expert's Report dated 15 December 2002. The reasons that the Expert's Report was not referred to in the Complainant's Submission are twofold. First, the Complainant is under no obligation to do so. Secondly, the decision of the Expert is almost entirely irrelevant to the current Submission given that no substantial evidence was submitted on behalf of the Complainant at that time. Despite this, the Respondent has gone on to quote, at considerable length, extracts from the Expert's Report.
5.2 At paragraph 6.3 the Respondent states that "the only new evidence the Complainant has offered since that point relates to (i) its right under common law … and (ii) correspondence intended to demonstrate alleged bad faith which existed between the Complainant and its erstwhile competitor Bust Stop…". This is not correct. The Complainant, in addition to the evidence referred to above has also provided evidence that the Respondent was a shareholder in Bust Stop and that the Respondent registered the Domain Name using the registered office of Bust Stop. In view of this new evidence it is submitted that the Expert's previous decision, that there was insufficient evidence before him to support a finding that the registration of the Domain Name was abusive, is no longer relevant.
5.3 In continuing this line of argument, the Respondent cites the decision of the Expert; "there is no other evidence … save for an indication that at the time of registration the address given for the Respondent was also the address of a competitor of the Complainant. No further information is given by the Complainant to explain the apparent connection between the Respondent and this competitor. The Expert finds that the Complainant's bare assertion of the showing of the address does not in itself give rise to a presumption that the Respondents intention in securing the registration was abusive for the purposes of the Policy". It is accepted by the Complainant that, in view of the lack of evidence put before the Expert at that time, the decision of the Expert was correct. However, the Expert's decision was based on the fact that there was only "an indication" and "a bare assertion" of the sharing of the address and that "in itself" this was insufficient to show an abusive registration. As discussed at paragraph 4 above and in its Submission, the Complainant has now been able to go much further than a "bare assertion" and has provided extensive evidence of the connection between the Respondent, Bust Stop and the Complainant."
The Expert took the view that in filing this Complaint the Complainant was clearly seeking a "second bite of the cherry". He followed his own decision in 1&1 Internet AG –v- SSL (DRS 01136) in which he held that "…an expert has an obligation to raise the issue of res judicata in order to protect the DRS procedure on public policy grounds." The principle of res judicata is that once a case has been finally decided upon by a Court the same parties cannot attempt to raise the issue again by or during further proceedings.
The Expert went on to consider and apply the principles set out in 1&1 Internet AG –v- SSL:-
"Applying the principles considered at length in 1 & 1 Internet AG –v- SSL in reaching a decision as to whether a Refiled Complaint should be allowed, the Expert must be guided by logic, by common sense and by analogy with general principles of law relating to re-litigation of cases.
In doing so it is necessary to distinguish between Refiled Complaints that concern the act which formed the basis of the original complaint, and Refiled Complaints that concern acts which have occurred subsequent to the decision on the original complaint.
Therefore taking the approach adopted in 1 & 1 Internet AG –v- SSL the following questions must be addressed:-
1. Are, the Complainant, the Respondent and the domain name in issue the same as in the earlier case?
2. Does the substance of the complaint relate to acts that occurred prior to or subsequent to the earlier decision?
3. If the substance of the complaint relates to acts that occurred prior to the earlier decision, is there any grounds for the rehearing or reconsideration? These grounds being limited and exceptional, examples being
1. serious misconduct on the part of the Expert, a witness or lawyer;
2. perjured evidence having been offered to the Expert;
3. the discovery of credible and material evidence which could not have been reasonably foreseen or known at the time of the earlier decision; and
4. a breach of natural justice.
4. If the substance of the complaint relates to acts that occurred subsequent to the earlier decision, acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based
In the present case, all the acts complained of occurred prior to and formed the basis of the original complaint, so it is only necessary to address the first three questions."
The Expert concluded that the Complaint should not be admitted under the DRS Policy because:-
i It is a refiled Complaint where the Complainant, the Respondent and the domain name in issue are the same as in the earlier decision in Bravissimo Limited v. Anna Gander (DRS 00661) delivered on 15 December 2002;
ii. the substance of the complaint relates to acts that occurred prior to the date of said earlier decision; and
iii. there are no limited and exceptional grounds for the rehearing or reconsideration of the Complaint and in particular in the present case, there has been no discovery of credible and material evidence which could not have been reasonably foreseen or known at the time of the earlier decision.
The Parties' Submissions on Appeal
Complainant
The Complainant makes the following submissions:-
1. The earlier Complaint was prepared by an employee without independent professional assistance who did not fully understand the requirements of the procedure.
2. Following the adverse decision in DRS00661 the Complainant considered an appeal in which it says it could have introduced new evidence, but concluded that it would be more sensible to make a new complaint having taken advice.
3. There is no prohibition to be found in either the DRS Policy or the Procedure banning second and subsequent complaints where the complainant, the respondent and the domain name are the same.
4. The principles adopted in 1&1 Internet –v- SSL are not appropriate for administrative (as opposed to Court) proceedings for the following reasons:-
(a) 1&1 Internet followed Grove Broadcasting (D2000-0703), a WIPO decision under the UDRP. The issue in Grove Broadcasting arose because there is no provision in the UDRP Procedure for the reconsideration of a Complaint. However, the UDRP Procedure and the DRS Policy are not analogous because the DRS Policy already makes provision, by way of not exercising a prohibition, for allowing a re-hearing.
(b) The rationale behind the 1&1 Internet and Grove Broadcasting decisions is that complainants should not "have 'another bite of the cherry' in circumstances that are, essentially, unfair and onerous for a respondent. …the procedure already contains provision for preventing multiple complaints deemed to be made in bad faith." The Respondent refers to paragraph 16(d) of the Procedure. The Procedure does not prohibit a second complaint in good faith. The decisions in 1&1 Internet and Grove Broadcasting involve the application of Court procedure/policy to an administrative proceeding. The expert under the DRS Policy is not acting in the same capacity as a Judge.
(c) Principles such as res judicata are inappropriate for an administrative procedure such as the DRS which unlike Court proceedings is relatively inexpensive and is intended to be a straightforward alternative to litigation and navigable by a layman. The Complainant refers to the Appeal decision in Hanna-Barbera –v- Graeme Hay (DRS 00389) where it deals with the applicability of the without prejudice rule.
5. At the time of the Complaint the 1&1 Internet decision had not been published and the Complainant was not aware that a second complaint could not be filed. It would be a denial of natural justice not to admit the current complaint.
6. At the time of the earlier Complaint the Complainant did not know that the Respondent was the sister of the directors of Bust Stop, the Complainant's former competitor. This was new evidence which only came out in the Response.
7. The Expert labelled the grounds under 1&1 Internet –v- SSL question 3 as being "limited and exceptional". In another WIPO decision, namely Creo Products Inc –v- Website In Development (WIPO D2000-1490) it was stated that "the categories of grounds upon which a re-filed complaint … can be entertained under the Uniform Policy, whilst limited are not closed" (emphasis added by the Complainant). If it is appropriate to apply those principles, question 3 should be construed broadly and not such as to exclude this Complaint from consideration.
Respondent
In her response to the Complainant's appeal, the Respondent supports the decision of the Expert and, in summary, submits that:
1. the procedures for bringing a complaint are straightforward and clearly set out in the Nominet documentation. The information and documentation was available to the Complainant at the time of the original complaint;
2. the test in 1 & 1 Internet relating to res judicata is clear. Here, the Complainant has not raised any new facts or matters that could be described as within the limited and exceptional grounds for re-hearing or reconsidering the complaint;
3. the Complainant has not introduced any credible or material evidence that could not reasonably have been foreseen or known at the time of the earlier decision, with the possible exception of the fact that the Respondent is a sister of the directors of Bust Stop. That was not sufficient new information to allow a re-hearing or a "second bite of the cherry";
4. paragraph 16(d) of the Procedure deals with multiple complaints made in bad faith and is not applicable to the issue of res judicata raised in this appeal;
5. there would be no "breach of natural justice" if the appeal were not allowed. The concept of res judicata existed prior to the publication of the 1 & 1 Internet decision and the position is quite clear.
Discussion and Findings
The issues for determination in this appeal are:
1 Should the principles developed by the judges in a line of legal authority dealing with the criteria to be applied when considering whether or not to admit fresh evidence in a case after there has been a judgment on the merits be applied to complaints under the administrative DRS Policy and Procedure?
2 If so, how should those principles be refined so as to be consistent with the tenor of the DRS Policy? and
3 are there any grounds for a rehearing or reconsideration of the original complaint?
So far as the first issue is concerned, as the Expert has pointed out, the purpose behind adopting the principles on the admission of further evidence is to protect the integrity of the DRS. They would do this by encouraging parties to use the DRS sensibly and efficiently. If there were no limits, there would be little incentive (apart from a moderate cost to complainants/appellants) for parties to get it right first time. It should not be forgotten that if these principles are to apply, they would apply not just to complainants in the context of re-filed complaints; they apply equally to the filing of further evidence prior to an appeal. Suffice it to say that the DRS is running satisfactorily at present, but could readily get clogged up if there were no limitations on repeat filings every time a complainant gets a result he does not like.
The Complainant contends that proceedings under the DRS should not be encumbered with procedural technicalities of this nature. The Complainant argues that legal concepts such as res judicata have no place here in a system which is intended to be a simple, straightforward alternative to legal proceedings. In support of this contention the Complainant prays in aid the fact that there is no express prohibition against re-filed complaints in the Policy, the fact that there is in the Procedure a mechanism for dealing with bad faith complaints and the fact that the panel of appeal in the Hanna Barbera decision excluded from the Procedure the without prejudice rule, which is a well-established feature of litigious procedure.
The Panel rejects each of those arguments. It would lead to an absurd result if everything were permitted which is not expressly prohibited in the DRS Policy and Procedure. The mechanism for dealing with bad faith complaints (paragraph 16(d) of the Procedure) contemplates a complainant who files a number of different complaints in bad faith, not a complainant who re-files the same complaint time and again. Inept complaints are not covered by paragraph 16(d), so if the Complainant were correct there would be no limit to the number of times an inept complainant could file complaints. Insofar as the Hanna Barbera decision is concerned, the without prejudice rule is in a materially different category. As that decision makes clear, there were a number of reasons for excluding the without prejudice rule from the DRS Policy and Procedure. Unlike res judicata, that rule serves no useful purpose in this type of administrative proceeding – quite the reverse.
The Panel is of the view that res judicata must apply for the proper administration of the DRS Policy and to achieve for the parties to disputes a reasonable degree of certainty and finality. That said, the Panel is conscious that since the introduction of the Civil Procedure Rules and their 'overriding objective', the English courts are no longer applying the res judicata rules as rigidly as they were (see, for example, Evans v. Tiger Investments 2002 EWCA Civ 161 and Rajinder Singh Saluja v. Partap Singh Gill 2002 EWHC 1435 (Ch)). They have to be applied in a manner proportionate to what is at stake in the litigation. The Panel is of the view that the same approach should be adopted by experts concerned with the DRS.
The Panel is supported in this view by the provisions of the Arbitration Act 1996. Section 1(a) of the Act states that "the object of arbitration is to obtain the fair resolution of disputes by an impartial tribunal without unnecessary delay or expense". The Panel takes into account this principle in reaching its decision.
Turning therefore to the second issue, the Panel has considered how the res judicata principles should be framed in the context of the DRS. The Panel accepts that the Expert's formulation of them in the decision under appeal is a reasonable one, but believes that they could be refined still further. For the guidance of others, the Panel takes the view that the questions could be better formulated as follows:
1. Are the Complainant, the Respondent and the domain name in issue the same as in the earlier case?
2. Does the substance of the complaint relate to acts that occurred prior to or subsequent to the close of submissions in the earlier case?
3. If the substance of the complaint relates to acts that occurred prior to the close of submissions in the earlier case, are there any grounds for the rehearing or reconsideration? In assessing this question, regard must be had to the need to protect the integrity and smooth operation of the DRS Policy and Procedure. These grounds will be the exception rather than the rule. Examples include (a) serious misconduct on the part of the Expert, a party, witness or lawyer; (b) false evidence having been offered to the Expert; (c) the discovery of credible and material evidence which could not have been reasonably foreseen or known for the Complainant to have included it in the evidence in support of the earlier complaint; (d) a breach of natural justice; (e) the avoidance of an unconscionable result.
4. If the substance of the complaint relates to acts that occurred subsequent to the earlier decision, acts on which the re-filed complaint is based should not be, in substance, the same as the acts on which the previous complaint was based.
Turning finally to the third issue, it is not in dispute that the answer to question 1 is in the affirmative and that the substance of the Complaint relates to acts all of which occurred prior to the filing of the Complaint. Accordingly, the question to be answered in this case is whether there are any exceptional grounds for a rehearing or reconsideration of the original complaint? Was the Expert right to apply the res judicata rules as he did? Should he have adopted a less rigid approach?
The examples set out in sub-paragraphs (a) to (e) of question 3 are merely examples. The Panel does not seek to suggest that the list is closed. However, they must be exceptional. The Complainant takes issue over the word "limited" in the Expert's formulation, but the Panel is satisfied that it was merely there to underline the fact that the grounds have to be exceptional and are rarely likely to be there.
In line with the last three appeal panel decisions the Panel has elected to review the case (and all the evidence filed) afresh. Accordingly, irrespective of whether or not the Expert came to a reasonable result, the Panel will substitute its decision if it sees fit.
The Panel summarises the position thus:
? The original complaint (DRS 00661) was based on registered trade mark rights dating from June 1998 and an assertion that the Domain Name was registered by someone with the same address as a former competitor of the Complainant
? This Complaint relies upon the same rights plus unregistered rights acquired by use from 1995, prior to the registration of the Domain Name. Additionally, the Complainant has adduced evidence to suggest that the Respondent registered the Domain Name with abusive intent and to show that the Respondent was a shareholder in the Complainant's former competitor whose address she used. The Respondent admits that the address she gave when registering the Domain Name was the address of one of her sisters, the driving force behind the competitor in question.
? The further evidence comprised letters dating back to 1994 and company search material readily available to the Complainant at the time of the earlier complaint. The only piece of evidence post-dating the previous complaint is a letter from a supplier stating that the registration of the Domain Name by the Respondent was a deliberate attempt to upset the Complainant. This letter, which was clearly written to support the Complaint, could have been written prior to the earlier complaint if the Complainant had requested it.
The fact of the matter is that the earlier complaint was woefully defective. Its defects owed nothing to any lack of clarity in the DRS Policy or Procedure. The defects cannot be ascribed to any failure by the Complainant to understand what was required. The Complainant simply failed to take any proper care when formulating the Complaint.
A further submission of the Complainant is that in the circumstances of this case res judicata should not apply because the 1&1 Internet v. SSL decision upon which the Expert's decision was based had not been published at the date of the Complaint. The Panel does not regard that as being sufficient reason. The Policy/Procedure is clear and the online template for a complaint contains sufficient prompts for a complainant to understand precisely what is required. This Panel's finding is that the principles as to whether a complaint should be re-filed and considered are and always have been as substantially set out in the 1&1 Internet v SSL decision and it matters not that that decision had not been promulgated at the time this Complaint was filed.
The Panel finds that there is no exceptional reason meriting a rehearing/reconsideration of the case. None of the examples of what constitutes an exceptional reason which are set out in question 3 above applies. The reason for the dismissal of the original complaint was a combination of ineptitude and a lack of commonsense. Moreover, when the adverse result came through first time, the Complainant did not appeal and did not re-file with any sense of urgency. The re-filed complaint followed on some nine months later.
The Panel is conscious that if the evidence ultimately filed had been filed first time around, it is possible that the result might have been different. Certainly, it was an extraordinary coincidence that the Respondent happened to chance upon the very name of her sisters' competitor. However, the fact that the result might have been different is not, in the circumstances of this case, enough.
The Panel might have taken a different view if this result were to lead to a gross injustice (i.e. an unconscionable result), but the Panel notes that the Complainant is not precluded from using its preferred domain name (the '.com' equivalent) and there is no sign of the Respondent using the Domain Name in an abusive fashion. If the Respondent's explanation for registering the Domain Name is true, it can be used in a manner which will cause the Complainant no inconvenience.
Decision
In the result the Panel finds that the Expert came to the correct conclusion for the right reasons and the appeal is dismissed.
_____________________ ____________________
Clive Thorne Ian Lowe
