Sarten Ambalaj Sanayi ve Ticaret Anonim Sirketi v. Stanley Pace
Claim Number: FA1606001679265
Complainant is Sarten Ambalaj Sanayi ve Ticaret Anonim Sirketi (“Complainant”), Turkey. Respondent is Stanley Pace (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sarten.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David L. Kreider, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2016; the Forum received payment on June 15, 2016.
On June 20, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <sarten.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 June 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2016 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@sarten.com. Also on June 24, 2016, 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.
A timely Response was received and determined to be complete on July 14, 2016.
On July 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that the trademark "Sarten" is registered and reputed in the area (e.g., the fabrication and distribution of metal containers, twist caps and plastic accessories and metal containers for a variety of industries including canned foods, cooking oil, aerosols, pesticides, engine oils and paints) among many countries; that the sign "Sarten" is part of the corporate name of the Complainant; that the domain name is identical to the trade mark of the Complainant; that the Respondent has no right and/or legitimate interest in the domain name; and that the domain name has been registered and is currently being used in bad faith.
Complainant further alleges that, “the Respondent has been the domain name owner for “sarten.com” since 14 January 2014, and hasn’t been using the domain name since. The nameserver data reflects that it has been on an auction site (sedoparking) since its acquisition. Therefore, it is clear that the Respondent's only intention and sole purpose when registering the domain name was to sell it.” (Emphasis added)
B. Respondent
Respondent relevantly alleges: “Roughly 6 months ago Complainant lost the same Complaint against me and my registration of sarten.com with WIPO
(Case No. D20151790). The Complaint was denied by a 3 member panel. In order to ostensibly improve their odds of prevailing this time, Complainant has intentionally deceived the Forum by changing a couple key points in their
Complaint that they know to be false, while the bulk of their Complaint remains the same. For example, Complainant now alleges that my registration was in 2014, when they know it was many years earlier….” (Emphasis supplied)
Respondent asserts: “This double jeopardy dispute[1] that lacks any material justification that was not available to the Complainant in their original Complaint is a flagrant abuse of the UDRP and I ask that the Panelist make a finding of Reverse Domain Name Hijacking.”
Preliminary Issue: Res Judicata
Respondent has alerted this Panelist to the existence of WIPO UDRP Case No. D2015-1790, decided by a three-member Panel on December 18, 2015, which arose between the same parties and concerned the same Disputed Domain Name “sarten.com”. The key findings of the three-member Panel in that case, decided a mere 7 months ago, are as follows:
“The Complainant is a Turkish company; the Respondent resides in the USA. When the Respondent registered the disputed domain name in 1998, the Complainant only held a single Turkish trademark registration for SARTEN (which has since expired). The Complainant also claims trade name use since 1972, but has failed to bring forward probative evidence to the effect that its common law use ever resulted in a reputation outside Turkey itself. The Panel concludes that there is no reason to believe the Respondent knew about the Complainant’s rights in the SARTEN mark or trade name, when the Respondent registered the disputed domain name in 1998.
Even if the Panel were to accept the Complainant’s suggestion that as a ‘sophisticated domainer’, the Respondent should have conducted adequate searching to ensure that the disputed domain name did not violate any trademark rights, the Complainant has not provided any evidence to indicate that the Respondent would have found the Complainant’s Turkish mark had he searched for it in 1998. In fact, it is not clear if the Respondent, while residing in the USA, would have even been able to confirm the existence of the Complainant’s Turkish company in 1998, let alone find the Complainant’s Turkish mark. Based on the Complainant’s evidence, its oldest domain name, <sarten.com.tr>, (and its earliest Internet presence under that name) was registered on January 6, 1999, a year after the Respondent registered the disputed domain name. (Emphasis added)
On the basis of the evidence filed by the parties, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a) of the Policy, that the disputed domain name was registered and used by the Respondent in bad faith. … On balance, the Panel accepts the Respondent’s evidence that he was not aware of the Complainant’s trademark rights when he registered the disputed domain name in 1998, nor, in the Panel’s assessment of the particular circumstances of this case, should he have been so aware.”
Concluding in that UDRP administrative proceeding that “the Complainant has failed to meet its burden to prove that the disputed domain name was registered and used in bad faith”, the Panel in that case dismissed the Complaint.
No doubt disappointed with the decision reached by the earlier three-member Panel in WIPO Case No. D2015-1790, Complainant has instituted this UDRP proceeding with a different institution, e.g., Forum, to have “a second bite at the cherry”, no doubt with a view to obtaining a favorable result the second time around.
Complainant’s action is barred by res judicata, a legal principle that a final decision on the merits by a court or tribunal having jurisdiction, is conclusive between the parties to a suit as to all matters that were argued, or that could have been argued, in the earlier proceeding.
Simply, the issues, which Complainant asks this Panel to decide in this administrative proceeding, have already been considered and decided in WIPO UDRP Case No. D2015-1790. The Complainant is barred by the principle of res judicata from pursuing this proceeding and re-litigating issues already decided by the WIPO Panel.
Reverse Domain Name Hijacking
As noted in highlighted text above, the Complainant in this case incorrectly alleges that the Respondent has been the domain name owner for “sarten.com” since 14 January 2014. As is also noted in highlighted text above, the Panel in WIPO UDRP Case No. D2015-1790 specifically found that Respondent registered the Disputed Domain Name on January 27, 1998, nearly sixteen (16) years earlier than was misrepresented by Complainant.[2]
In sum, this Panel finds merit in Respondent’s allegation that Complainant “has intentionally deceived the Forum by changing a couple key points in their Complaint that they know to be false”, such as the key date the Respondent registered the Disputed Domain Name.
The Panelist notes with concern the complete absence from the Complaint of any reference to Complainant’s earlier failed challenge against this Respondent to claim this same domain name in WIPO UDRP Case No. D2015-1790.
Significantly, this is not an instance where a complainant openly and in good faith re-files a complaint to present new and previously undiscovered or unavailable evidence. See, e.g., Cash Converters Pty Ltd. v. Casshies Investments Pty Ltd. WIPO UDRP Case No. DAU2014-0035. The Complainant will not be heard to deny that it acted in these proceedings with full knowledge of the findings of the Panel in WIPO UDRP Case No. D2015-1790, a case which this same Complainant instituted. Rather, this is a case where Complainant has sought to surreptitiously and dishonestly bring the same case twice, in violation of the UDRP, in the hope of obtaining a favorable result through its wrongful conduct.
In short, Complainant in this action has (1) misrepresented a critical but inconvenient fact, e.g., the date the Respondent registered the Disputed Domain Name, and (2) has entirely omitted and failed to disclose the critical and inconvenient fact of its earlier failed UDRP challenge, with an intention and for the purpose of misleading this Panel. Complainant has attempted by this proceeding to have an earlier unfavorable ruling overturned through improper means, by flagrantly abusing the UDRP process.
The Panel has no hesitation in finding reverse domain name hijacking by Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
There is no basis for this Panel to interfere with the finding reached by the Panel in WIPO UDRP Case No. D2015-1790, decided by a three-member Panel on December 18, 2015, which is res judicata.
There is no basis for this Panel to interfere with the finding reached by the Panel in WIPO UDRP Case No. D2015-1790, decided by a three-member Panel on December 18, 2015, which is res judicata.
There is no basis for this Panel to interfere with the finding reached by the Panel in WIPO UDRP Case No. D2015-1790, decided by a three-member Panel on December 18, 2015, which is res judicata.
The Complainant having failed to establish all three elements required under the ICANN Policy and having been found to have committed REVERSE DOMAIN NAME HIJACKING, and the decision of the Panel in WIPO UDRP Case No. D2015-1790 being res judicata, it is Ordered that the Complaint be and is hereby DISMISSED and that the <sarten.com> domain name REMAIN WITH RESPONDENT.
David L. Kreider Esq., Panelist
Dated: July 21, 2016
[1] It must be noted that “double jeopardy”, a principle found in the criminal law, which, broadly speaking, forbids a defendant from being tried again on the same (or similar) charges following a legitimate acquittal or conviction, has no relevance whatsoever within the context of these administrative UDRP proceedings.
[2] On July 21, 2016, this Panelist conducted a WHOIS search of the Disputed Domain Name and verified that Respondent registered the name on January 27, 1998.
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