Using res judicata in domain name dispute resolution

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In the recent Hong Kong International Arbitration Centre (HKIAC) domain name dispute decision DCN-1600717, an American company, Training Mask, filed a complaint under the China Internet Network Information Centre Domain Name Dispute Resolution Policy (CNDRP) against a Chinese respondent who possessed the domain name trainingmask.cn.

iStock-479178750In fact, Training Mask had already requested the transfer of the same domain name in December 2015, when it filed the same complaint at the China International Economic and Trade Arbitration Commission (CIETAC) domain name dispute resolution centre. A three-member CIETAC panel dismissed that claim on the grounds that since the respondent did not attempt to make any financial gain by offering to sell the domain name, and words like “training” and “mask” are commonly used in English, bad faith as required by articles 9(3) and (4) of the CNDRP was missing. Without disclosing the previous filing, Training Mask refiled the complaint at HKIAC in January 2017. Raymond Ho, the HKIAC appointed sole panelist, dismissed the case, this time based on the common law principle of res judicata.

Domain name dispute resolution (DNDR) policies generally allow parties adversely affected by proceedings to seek recourse in court in respect of DNDR panel decisions. For this reason, cases involving an already disputed domain name are rare. HKIAC records show that “refiled” requests are generally based on procedural defects during the initial filing, such as parties not paying the registration fee on time, for example. However, just like any judicial or quasi-judicial process, DNDR proceedings are subject to abuse. If not successful in one DNDR forum, some complainants try their luck at having their legal rights decided at a different DNDR forum, betting on the small chance that panelists of a different service provider will decide on the request differently.

Case jurisprudence generally suggests a negative attitude among panelists towards frivolous “refilings”. Uniform Dispute Resolution Policy (UDRP) rule 15(a) allows a panel to consider “any rules and principles of law that it deems applicable”, and many refiled cases are dismissed under the widely accepted legal principle res judicata (or more generally, issue preclusion).

Panelists cite reasons including judicial efficiency and fundamental fairness to support the application of the doctrine of res judicata. In the landmark WIPO decision, Grove Broadcasting v Telesystems Communications, the panel held that in order to reopen a decided case, the complainant must show: 1) serious misconduct by a judge, juror, witness or lawyers; 2) perjured evidence being offered to the court; 3) the discovery of credible and material evidence that could not have been reasonably foreseen or known at trial; and 4) a breach of natural justice/due process. This very high standard for refiling has been followed by WIPO panels generally (see Creo Products v Website in Development; Jetfly Aviation v Jen K Styve; Alpine Entertainment Group v Walter Alvarez).

In August 2014, M&M Company and Waimanly International co-filed a complaint against Mini Pit Limited (HK) at the HKIAC to request the transfer of the domain name “iimo.com.hk”.

The Japanese toy manufacturer, M&M, had licensed several business co-operation partners to sell and distribute its products in regions such as the People’s Republic of China, Hong Kong and Taiwan. The complainants claimed that the respondent had no legitimate rights to continue to possess the iimo.com.hk domain name because its “reselling and other rights” were terminated pursuant to a “termination notice” sent out earlier that year.

The panelist did not agree with the complainants and dismissed the claim. The complainants refiled the case with the same service provider. They contended that the panelist had misinterpreted the underlying agreement and “had a gross misunderstanding and indeed a wrong finding of facts … that led to a breach of natural justice”. Therefore, according to the complainants, the refiling was the “mere pursuit of defending their rights to a fair and just opportunity to have their case properly considered”.

In the refiled case, the sole panelist appointed by the HKIAC adhered to the high standards maintained by WIPO panelists and decided that the case did not warrant being reopened.

The panelist reasoned that unlike earlier HKIAC decisions, such as VeriSign, Inv v Kristopher-Kent Harris, no new set of action had arisen after the initial proceeding, and there was also no finding of serious misconduct by the panel.

Compared with the facts in the M&M case, the Training Mask case seems to suggest an even stronger presumption that the dispute resolution procedure has been abused by the complainant. First, the complainant in M&M waited for approximately one year to refile the case instead of taking it to a competent court. Second, the complainant intentionally tried to refile the case at a different service provider.

Training Mask is the first HKIAC-administered CNDRP case dismissed on the basis of res judicata. It may be considered as having established a precedent for .cn disputes. It signals that Asian panelists are willing to borrow res judicata from the common law in order to prevent repetitive disputes over the same domain name, and to protect the finality of the previous panel’s decision. Therefore, unless significant new evidence has been discovered, parties should avoid refiling a case involving a domain name that has already been disputed.

SHANG CARRIE SHU is ADR legal counsel at the Hong Kong International Arbitration Centre