Refiling an unsuccessful UDRP Complaint
Refiling an unsuccessful UDRP Complaint - Griffith Hack
|11 May 2011|
|A recent Uniform Domain-Name Dispute-Resolution Policy (UDRP) decision has confirmed that unsuccessful UDRP Complaints may be refiled and considered afresh in certain limited circumstances.|
Telstra (and a subsidiary company, Sensis) filed a Complaint in May 2010 against Yellow Page Marketing BV (Yellow Page), a Dutch company. Yellow Page had taken steps to launch online directories for the Australian market by registering 10 domain names comprising “yellowpage” followed by an Australian capital or region (eg. “yellowpage-melbourne.com”) and then sending faxes to Australian businesses to solicit listings.
The initial UDRP Complaint was dismissed and Telstra refiled the Complaint. A three member panel of the World Intellectual Property Organisation recently decided that the matter could be revisited for two reasons:
|The Panel noted that the UDRP is silent on the question of refiled complaints. The Panel held that complaints can be refiled in circumstances similar to those in which a judicial complaint can be re-litigated, including, for example, serious misconduct by a panellist, witness or lawyer, perjured evidence, the discovery of credible and material evidence which could not have been reasonably foreseen or known at the time, and a violation of “natural justice” or due process.|
Telstra’s Complaint was reconsidered and, in light of its new evidence and its submissions, the Panel decided in favour of Telstra, ordering the transfer of all 10 disputed domain names.
The decision highlights that refiling an unsuccessful complaint may be an option in limited circumstances, made all the more attractive by the relatively low cost of UDRP proceedings.
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