TABCORP Assets Pty. Ltd.; TABCORP Holdings Limited v. Steven Hertzberg; Steven Hertzberg; Steven Hertzberg

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

TABCORP

Holdings Limited and TABCORP Assets Pty Ltd v. Steven Hertzberg

Case No.

D2001-1052

1. The Parties

Complainants are

TABCORP Holdings Ltd, an Australian public company, limited by shares, and its

wholly owned subsidiary, TABCORP Assets Pty Ltd, both having a place of business

in Melbourne, Australia ("TABCORP").

Respondent is Steven

Hertzberg, an individual with an address in San Carlos, California, U.S.A. ("Hertzberg").

2. Domain Name and Registrar

The domain name in issue

is <tabcorp.com>.

The registrar is Network

Solutions Inc., Herndon, Virginia, U.S.A., ("NSI").

3. Procedural History

The WIPO Arbitration and

Mediation Center (the Center) received the complaint in this proceeding via

email on August 22, 2001, and in hard copy form, together with the requisite

fees, on September 4, 2001.

On August 24, 2001, the

Center transmitted via email to NSI a request for registrar verification in

connection with this case. On August 27, 2001, NSI transmitted via email to

the Center NSI’s confirmation that (1) Hertzberg is the current registrant of

the domain name in issue, (2) NSI Service Agreement Version 5 is in effect,

and (3) the domain name registration is in "active status."

Also, on August 24, 2001,

the Center advised the parties via email that

"The Center’s processing

of the Complaint is without prejudice to the determination to be made by the

Administrative Panel as to whether the arguments advanced by the Complainant

in Paragraph 12 meet the refiling criteria set out in previous WIPO decisions,

including WIPO Case Nos. D2000-0703 and

D2000-1490."

On September 7, 2001, the

Center requested TABCORP, who designated a three-member Administrative Panel,

to provide names and contact details of three candidates for the Panel by September

12, 2001. The Center received TABCORP’s nominations via email on September 12,

2001 and in hard copy form on September 18, 2001.

On September 18, 2001,

the Center verified that the complaint satisfies the formal requirements of

the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules

for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).

On September 19, 2001,

the Center transmitted to the parties Notification of Complaint and Commencement

of Administrative Proceeding, together with copy of complaint and its addendum.

The Center advised the parties that the formal date of the commencement of this

administrative proceeding is September 19, 2001, and the last day

for sending Hertzberg’s response is October 9, 2001.

On October 9, 2001, the

Center received respondents’ response via email, and on October 11, 2001, in

hard copy.

On October 16, 2001, the

Center advised the parties that Jonas Gulliksson and Dan Hunter had been

appointed as Panelists. On November 5, 2001, the Center advised the parties

that David W. Plant had been appointed as Presiding Panelist. The Center advised

that absent exceptional circumstances, the panel is required to forward its

decision to the Center by November 19, 2001. On November 19, 2001,

the Center advised the parties that the decision due date had been extended

to December 3, 2001.

4. Factual Background;

Parties’ Contentions

a. The Trademark

The complaint is based

on TABCORP’s Australian registered trademark "TABCORP (including an image eclipse

incomplete breaks star)", lodged on September 17, 1997 and registered as Trade

Mark No. 744217 (Exhibit H to the complaint), and on TABCORP’s common law rights

in the mark.

TABCORP avers also that

it has registered the domain name <tabcorp.com.au> and operates a website

at that address.

b. Prior Proceedings

TABCORP avers that it submitted

a complaint ("original complaint") to the Center on June 7, 2000, relating to

two domain names held by Hertzberg, viz. <tabcorp.com> and <tabcorp.org>.

TABCORP avers further that the panel in that hearing ("original panel")

"ordered that tabcorp.org

be transferred to the Complainant, but declined to order that tabcorp.com

be transferred to the Complainant on the grounds that there was no more than

a suspicion that the Respondent had registered the domain name in bad faith

... " (Complaint ¶ 12(a)).

A copy of the original

decision appears at Annex C to the complaint. It is WIPO Case No. D2000-0566.

In his decision dated September 20, 2000, the original panelist found that,

with respect to <tabcorp.com>, TABCORP had satisfied all of the criteria

of Paragraph 4.a. of the Policy, except for bad faith registration. The original

panelist stated:

"Subsequent bad faith use

does not necessarily prove bad faith registration. In this case, the presence

of the Respondent in Australia at the time of registration excites suspicion.

But, given his statutory declaration that he did not know of the Complainant

at the date he registered the domain name, compared with the Complainant’s hearsay

suggestion that he did, it will be for a Court to determine where the truth

lies. The Panel finds bad faith registration not proved."

* * *

"In relation to the Respondent’s

dealings with Ms. Baker, it is not possible for a Panelist in this expedited

proceeding to make any credibility findings. There is a clear conflict of evidence

between the suggested evidence of Ms. Baker (produced only by a note of a conversation)

that the Respondent’s motive in registering the domain name <tabcorp.com>

was later to sell it at a profit. In evidence produced in a more satisfactory

form, Respondent denies this. There is also a conflict whether or not the domain

name was held on trust by the Respondent for Ms. Baker’s Trust. This has an

impact on the Complainant’s approach to NSI to transfer the name which the Respondent

characterizes as ‘unclean hands’ by the Complainant. Such matters can only be

determined in a Court of competent jurisdiction and not by a WIPO Panelist operating

under the ICANN Dispute Resolution Policy."

* * *

"The Panel decides that

the Complainant has not made out a sufficient case for the transfer of the domain

name "tabcorp.com". At best for the Complainant, there is only a suspicion

that this domain name was registered in bad faith. The Complainant will have

to take Court proceedings if it wishes. The Panel declines to order the transfer

of the domain name <tabcorp.com>."

The original panel noted

that TABCORP submitted a file note by its employee Mr. McPhail as to a

conversation he allegedly had with Ms. Baker. The original panel stated:

"No affidavit or statutory

declaration from Mr. McPhail or Ms. Baker was filed".

* * *

"His [Hertzberg’s] statutory

declaration in support of his contentions is better evidence than the Complainant’s

presentation of a file note of an employee’s conversation with Ms. Baker or

of a letter from Ms. Baker. However, even if the Complainant had provided a

higher standard of evidence, the Panel would not be in a position to adjudicate

on credibility issues."

TABCORP urges that, under

two WIPO decisions (Grove Broadcasting Co. Ltd., v. Telesystems Communications

Limited, WIPO Case No. D2000-0703,

and Creo Products Inc., v. Website In Development, WIPO

Case No. D2000-1490), a "Refiled Complaint" will be accepted under certain

circumstances stated in those decisions. Here, TABCORP attempts to satisfy two

of the circumstances by offering an August 17, 2000 declaration of

Carolyn Jane Baker, which TABCORP claims was not available to the original panel

(Complaint ¶ 12(a)(ii)-(vii)). TABCORP asserts that the Baker declaration (a)

is credible and material evidence which could not reasonably have been obtained

by TABCORP for the original complaint, and (b) establishes that evidence offered

to the original panel by Hertzberg was perjured and fraudulent.

c. The Complaint Re

Respondents’ Activities

Paragraphs 12(b)-(f) set

out TABCORP’s averments as to Hertzberg’s activities which TABCORP asserts justify

transfer of the domain name to TABCORP. Not surprisingly, the complaint in this

proceeding is virtually a verbatim reproduction of the original complaint [1]

with regard to (i) identity and confusing similarity, (ii) no rights or legitimate

interests (except for a revised description of the offending web site), and

(iii) bad faith use and bad faith registration (except for references to the

Baker declaration, a declaration by Marcus Hoyne re his dealings with regard

to the Baker declaration, another Hoyne declaration re changes in Hertzberg’s

contact details, a declaration by Mr. Hoyne’s assistant, a declaration by Francis

McPhail re dealings with Ms. Baker, and a revised description of the offending

web site) [2]. Mr. Hoyne was TABCORP’s authorized

representative in the original proceeding. Mr. McPhail was an employee of TABCORP

"at all relevant times".

TABCORP requests that the

panel decide that the domain name in dispute be transferred to TABCORP.

d. The Response

Hertzberg asserts that

the Baker declaration contains information already offered by TABCORP and considered

by the original panelist. Hertzberg avers the original complaint, submitted

on June 7 and 13, 2000, asserted certain communications had occurred between

Ms. Baker and Hertzberg, and between Mr. McPhail and Hertzberg, and states TABCORP

did not submit an affidavit or declaration from either Ms. Baker or Mr. McPhail.

Hertzberg asserts that

he filed a response in the original proceeding, and on September 6, 2000,

the Center transmitted the original complaint and original response to the original

panel. Hertzberg quotes from the original decision as to the shortcomings in

TABCORP’s evidence.

Hertzberg contends the

"Refiled Complaint"is "brought by the same Complainant based on the same evidence

against the same Respondent and seeks the same transfer of the same domain name."

Hertzberg cites Creo Products to the effect that TABCORP bears

a high burden of establishing that this complaint should be entertained.

Hertzberg contends that

TABCORP "does not allege any facts or subsequent conduct by the Respondent which

it did not allege in the Original Complaint." Hertzberg cites Backstreet

Boys Pruductions, Inc., v. Zuccarini, WIPO

Case No. D2000-1619, for the circumstances that may warrant acceptance of

a refiled complaint. Hertzberg cites Creo Products and G.A. Modafine

S.A. v. Sparco P/L, WIPO Case No. D2001-0370,

for the proposition that "new evidence" which might justify acceptance of a

refiled complaint is evidence which "could not have been obtained with reasonable

diligence for use at the trial" and "would probably have an important influence

on the result of the case." Hertzberg contends the Baker declaration is merely

a new form of old evidence and is not "new evidence". Hertzberg discusses in

detail the original panelist’s consideration of TABCORP’s original assertions

concerning communications with and conduct of Ms. Baker. Also, Hertzberg questions

why, if the Baker declaration were indeed so important, TABCORP waited over

a year to refile its complaint.

Hertzberg cites G.A.

Modafine and Grove Broadcasting for the proposition that a subsequent

panel should be reluctant to overrule a prior panel on the merits.

Hertzberg requests that

this panel deny TABCORP’s requested relief, and on the ground that this proceeding

cannot have been initiated in good faith, requests that TABCORP be ordered to

compensate Hertzberg for its reasonable attorneys’ fees and costs for defending

"both this action and subsequent [sic] action."

5. Discussion and

Findings

a. The Policy and the

Rules

Paragraph 4.(a) of the

Policy directs that complainants must prove, with respect to each domain name

in issue, each of the following:

(i) The domain name

is identical or confusingly similar to a mark in which complainants have rights,

and

(ii) Respondents have

no rights or legitimate interests in respect of the domain name, and

(iii) The domain name

has been registered and is being used in bad faith.

However this is an unusual

case, since it is a re-filing of an earlier Complaint with some additional evidence,

and the Complainant in essence is requesting that this Panel re-adjudicate the

matter. Therefore, because of the special nature of this case, before examining

the substantive requirements of paragraph 4.(a) it is necessary to deal with

a number of procedural issues that the Complaint raises.

b. The Panel’s Analysis

Here, this panel is asked

to re-adjudicate the issues decided in the original proceeding with respect

to the domain name <tabcorp.com>. This panel declines to accept this invitation.

There is no provision either

in the Policy or the Rules which provides guidance as to the re-filing of cases.

Under Paragraph 15(a) of the Policy, a Panel is required

to "decide a complaint on the basis of the statements and documents submitted

and in accordance with the Policy, these Rules and any rules and principles

of law that it deems applicable". Two seminal cases within the UDRP (Grove

Broadcasting, WIPO Case No. D2000-0703

and Creo Products, WIPO Case No. D2000-1490)

have considered this issue, and both have come to essentially the same conclusion.

In situations such as this case, where the re-filing is not based on a respondent’s

conduct occurring subsequent to the original,

"once a party has been

given a defended hearing in a Court and a decision rendered, then a case cannot

be re-litigated unless either (a) the decision is overturned on appeal and (b)

limited grounds for rehearing or reconsideration by the first-instance court

have been established. Such limited grounds ...can include, for example: (a)

serious misconduct on the part of a Judge, juror, witness or lawyer; (b) perjured

evidence having been offered to the Court; (c) the discovery of credible and

material evidence which could not have been reasonably foreseen or known at

trial and (d) a breach of natural justice." (Grove Broadcasting, WIPO

Case No. D2000-0703 at ¶ 6.)

On the only matter in issue

in this proceeding–"the discovery of credible and material evidence which could

not have been reasonably foreseen or known at trial"–the Grove and Creo

Panels identified the nature of the evidence

"...first, it must be shown

that the evidence could not have been obtained with reasonable diligence for

use at the trial: second, 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: third, 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" (Grove Broadcasting, WIPO

Case No. D2000-0703 at paragraph 6, quoting the English Court of Appeal

in Ladd v Marshall [1954] 3 All ER 745, 748 and the New Zealand Court

of Appeal in Dragicevich v Martinovich [1969] NZLR 306, 308).

We concur with the basic

principles established in Grove Broadcasting and Creo Products,

and agree in general terms with the learned Panels in both of those cases. We

note that a number of other Panels have made similar findings, and it seems

that a broad consensus on this issue is now emerging. See e.g. Backstreet

Boys v. Zuccarini, WIPO Case No. D2000-1619;

Furrytails Limited v. Andrew Mitchell d/b/a Oxford Die-Cast, WIPO

Case No. D2001-0857.

What then of the particular

invitation in this proceeding, and specifically the nature of the evidence which

the Complainant argues is "new evidence" sufficient to ground the re-filing

of the proceeding? It is abundantly plain on this record that the complaint

in this proceeding is grounded on the same averments as to bad faith registration

as the original complaint. The only difference between the two complaints is

that this complaint is accompanied by declarations. The declarations do not

save this complaint. They cannot re-do TABCORP’s failure in the original proceeding

to carry its burden of proving bad faith registration of <tabcorp.com>.

Wholly apart from its content,

the executed copy of the Baker declaration of August 17, 2000, is

not new evidence. The Baker declaration was in the hands of TABCORP’s counsel

on August 18, 2000 (Hoyne Decl. ¶ 25). On August 18, 2000, counsel

filed the Baker declaration (Id. ¶ 26). According to the Hoyne declaration,

the Baker declaration was not transmitted to the panelist who rendered the original

decision (Id. ¶ 28) [3]. According to the

original decision, the file was transmitted via courier on September 6, 2000,

to the panelist who rendered the original decision. Thus, the Baker declaration

was available to TABCORP, i.e. in the possession of its counsel, 19 days before

the original file was transmitted to the panelist, and 34 days before the panelist

rendered the original decision. Having been transmitted to the Center on August 18, 2000,

the Baker declaration was in the Center’s possession during roughly the same

period of time.

TABCORP had a clear opportunity

to present the Baker declaration to the original panelist. It is not uncommon

in proceedings under the Policy for a party to submit to the Center additional

documents, notwithstanding the absence of express authorization to do so in

the Policy, the Rules or the Supplemental Rules. It is also not uncommon for

the Center to transmit to panels such out of season submissions. At the least,

it would have been reasonable and diligent for TABCORP to have tried to assure

that the deciding panelist in the original proceeding would have the Baker declaration.

TABCORP acted at its peril in not attempting to assure that the Baker declaration

would be considered by the deciding panelist, especially when the file was not

transmitted to that panelist until three weeks after TABCORP’s counsel had transmitted

the declaration to the Center. The Baker declaration is not new evidence.

The McPhail declaration

was executed on August 18, 2000. Accordingly, like the Baker declaration, TABCORP

could at least have attempted to bring the McPhail declaration to the original

panelist’s attention before he commenced his deliberations. The present complaint

is entirely silent on this score. Presumably, even if TABCORP were frustrated

in April and May 2000 in its attempts to obtain a declaration from Ms. Baker,

TABCORP should not have experienced any difficulty with its own employee. The

McPhail declaration is not new evidence.

In light of the observations

of the original panelist (e.g. "even if Complainant had provided a higher standard

of evidence, the Panel would not be in a position to adjudicate on credibility

issues"), it is plain that the Baker declaration and the McPhail declaration

are not material to the disposition of this matter on the merits. They simply

elaborate on matters averred by TABCORP in the original complaint. It is clear

they would only have sharpened the credibility contest and would not have influenced

the outcome in the original proceeding. Like the original panelist, this panel

would find it inappropriate to rule on the credibility issues raised by the

pleadings in this proceeding. In particular, this panel could not find perjury

or fraud on the record before it.

In Creo Products,

the panel accepted a refiled complaint because it was based, in part, on acts

occurring subsequent to the previous decision. That is not our case. Importantly,

for our purposes, the Creo Products panelist observed:

" ... some general principles

about the determination of this issue [entertaining a Refiled Complaint] can

and should be stated, follows. 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. ..."

We conclude that the Complainant

has failed to meet its "high burden". The situation here fits under Grove

Broadcasting, where the panelist stated:

"The additional evidence

presented in this case in effect seeks to supply the information not supplied

to the Panelist on the first occasion after his specific request. This is not

justification for a new hearing in this case. In a case where a party has had

every opportunity to put forward its case, there is no suggestion that the Panel

acted in disregard of principles of natural justice; there should not be another

opportunity. ... Parties are expected to ‘get it right’ the first time."

Given this procedural finding,

it is unnecessary for us to consider the substantive requirements of Paragraph

4.(a).

Paragraph 4.(k) makes it

plain that court proceedings are available to the parties both before a mandatory

administrative proceeding is commenced under the Policy, as well as after such

a proceeding is concluded. The UDRP is clearly not the appropriate mechanism

for the resolution of this dispute. In the circumstances, the Complainant is

free to make use of the provisions of Paragraph 4.(k).

As for Hertzberg’s request

that TABCORP be ordered to compensate Hertzberg for his attorney fees and costs,

Hertzberg cites no authority – and the panel finds none – authorizing this panel

to issue such an order.

6. Decision

In light of the findings

by the panel, the panel decides that TABCORP has not met its burden of proving

this panel should accept and consider the complaint in this proceeding on the

merits. Accordingly, the panel declines to consider the complaint and orders

that it be dismissed with prejudice.

The panel denies Hertzberg’s

request that attorney fees and costs be awarded to Hertzberg.

David W.

Plant

Presiding Panelist

Jonas Gulliksson

Panelist

Dan Hunter

Panelist

Dated: December

3, 2001

Footnotes:

1.

A copy of the original complaint appears at Exhibit A to the Response.

2.

Only the Baker declaration is asserted as having been "not available to

the Original Panel" (Complaint ¶ 12(c)(ii)).

3.

The Hoyne declaration refers to an "original panellist" in the original

proceeding, who apparently requested additional information, and a "second panellist",

who apparently did not receive the requested information (Id. ¶¶ 23, 26, 28,

29). This is the only reference in this record to this episode. It appears that

the August 17, 2000, Baker declaration was prepared and executed in response

to TABCORP ’s counsel’s request of August 16, 2000, notwithstanding that counsel’s

original request appears to have been made in April 2000 (Id. ¶¶ 5, 6) and TABCORP’s

counsel had apparently abandoned the notion of relying on such a declaration.

Other cases for this domain

• TABCORP Assets Pty Ltd.; TABCORP Holdings Limited v. Steven Hertzberg — D2000-0566 · tabcorp.com, tabcorp.org · Split decision · 20 Sept 2000