DECISION

 

Scoop Soldiers Services Company, LLC v. Top Paw Distributing LLC

Claim Number: FA2408002109450

 

PARTIES

Complainant is Scoop Soldiers Services Company, LLC ("Complainant"), represented by Anthony Davis of Santomassimo Davis, LLP d/b/a OGC Solutions, New Jersey, USA. Respondent is Top Paw Distributing LLC ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <scoopsoldier.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Eugene I. Low as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 2, 2024; Forum received payment on August 2, 2024.

 

On August 5, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <scoopsoldier.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2024 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@scoopsoldier.com. Also on August 9, 2024, 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 August 29, 2024.

 

On September 3, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Eugene I. Low as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: EFFECT OF PREVIOUS UDRP PROCEEDING

Complainant's contentions

In its Amended Complaint dated August 9, 2024, Complainant explained that it previously filed a complaint in respect of the Disputed Domain Name on July 19, 2023, which concluded on August 29, 2023 against Complainant's favour ("First Proceeding"). See Scoop Soldiers Service Company, LLC v. Carl Gregory, FA2307002053790, decided by a three-member panel. Complainant however contended that the First Proceeding was brought against Carl Gregory ("Mr. Gregory"), who did not object to being listed as the Respondent in the First Proceeding. Complainant submitted that the matter should have been brought against Top Paw Distributing LLC (i.e. the current Respondent) since it is listed as the Registrant for the Disputed Domain Name.

 

Complainant explained that the statutory agent for Respondent is another Arizona corporate entity, Top Paw LLC. Mr. Gregory is the statutory agent for Top Paw LLC. Mr. Gregory is also the registrant or presumed agent of the domain name <poopydoo.com> ("Redirected Domain") - which is re-directed from the Disputed Domain Name - since he did not deny this fact and participated in the First Proceeding.

 

Complainant contended that should the Panelist find that the current matter is barred based on the principle of res judicata, for the reasons set forth below, the matter should nevertheless be reheard.

 

As a first basis for rehearing, Complainant contended that the previous panel conducted serious misconduct when they found Complainant's trade mark SCOOP SOLDIERS ("Scoop Mark") was "merely descriptive", thereby disavowing Complainant's trademark rights and erroneously finding that Respondent/Mr. Gregory had a plausible basis to have selected the Disputed Domain Name. Despite the previous panelists acknowledging that the Disputed Domain Name was registered three years after the Scoop Mark was registered with the United States Patent and Trademark Office ("USPTO"), the panelists found that the Complainant lacked trademark rights in the Scoop Mark. However, it is a fundamental tenant that securing a trademark registration confers exclusive rights to a mark. The panelists conceded that a fanciful nature of a trademark suggests that any similarity between a mark and a disputed domain is not happenstance. However, the panelists made their own legal determination regarding the validity of the Scoop Mark rather than defer to the findings of the USPTO, who found that the Scoop Mark met all the requirements of a national registration. Accordingly, the panelists engaged in serious misconduct which had adversely affected the Complainant.

 

In the first alternative, the panelists conducted serious misconduct because they allowed the First Proceeding to proceed with the wrong registrant. As discussed above, the proper Respondent is Top Paw Distributing LLC. According to corporate documents, its statutory agent is Matt Smith. While there may be a strong nexus to Mr. Gregory, the registrar for the Disputed Domain Name would not have been able to execute a "transfer" order from the panelists – if such order would have been granted by the panelists. Accordingly, the entire First Proceeding would have been ineffective if Complainant has succeeded. Such oversight from the expert panelists is inexcusable and should be rectified.

 

In the second alternative, the panelist here should rehear this complaint because the previous panelists relied on Mr. Gregory's misstatements that influenced that outcome of the First Proceeding. Respondent stated that he had no knowledge of Complainant or its mark when he registered the domain name <scoopsoldier.com>. Further, Mr. Gregory alleged that he selected the Disputed Domain Name based on recommendations from GoDaddy.com.

 

Complainant argued that it is simply misleading to allege that GoDaddy.com, the registrar through which the Disputed Domain Name was registered and purchased, recommended the Disputed Domain Name. There are two ways to purchase a domain name through GoDaddy.com. The first is to perform a manual search of the availability of a domain name. Presumably, Respondent did not do this otherwise it would indicate that Respondent intentionally searched for an available domain name similar to the Disputed Domain Name. The other way to purchase a domain name is to use the AI-powered domain name generator. This feature allows a user to enter an idea and the registrar will provide recommendations. However, this feature returns recommendations based on the search query. Meanwhile, the Disputed Domain Name comprises the registered mark SCOOP SOLDIERS, a fanciful term. It is simply implausible that GoDaddy would recommend a fanciful domain name, namely SCOOP SOLDIER(S), based on the concept of pet waste removal services. Rather, in a search for an availability of a domain name, GoDaddy will "recommend" a domain name with different top-level domains (e.g. "net", "com") based on the input query. Because the previous panelists relied on Respondent's misrepresentations, finding that Mr. Gregory had "innocent intentions" when registering for the Disputed Domain Name, the panelist here is requested to rehear this dispute.

 

Respondent's contentions

In a Response dated August 29, 2024 submitted by Carl Gregory (owner of Respondent), Respondent contended that Complainant is literally appealing each and every item of the previous decision. Such appeal has no merit and should be rejected based on the following reasons:

 

a)       Complainant had 10 days to appeal from the date of the previous decision which expired over a year ago.

b)       As per its previous Complaint, Complainant had no proof and merely used "Allegations" in which the previous panel also cited in their reasoning summation, "Importantly, mere allegations about a respondent's subjective intention are not evidence in this regard" and that Complainant having "failed to establish all three elements" required under the ICANN Policy.

c)       With that in mind and one year later, Complainant still uses the same allegations, but this time cites case law.

d)       Complainant fails to realize is that case law is not proof and that anyone can find case law to support any argument for any position.

 

In addition, Respondent submitted that Carl Gregory is and has been the owner of the Disputed Domain Name just like it was in the First Proceeding.

 

Respondent also submitted that this is a Reverse Domain Name Hijacking case.

 

FINDINGS

Generally speaking, re-filed UDRP complaints would be barred by the principle of res judicata. It is only under highly limited circumstances that panelists may accept re-filed UDRP complaints, e.g. where there was serious misconduct in the original proceedings (e.g. perjured evidence); or where new material evidence that was reasonably unavailable in the original proceedings is now presented. See Paragraph 4.18 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, for a more detailed discussion on the applicable criteria.

 

Further, the Policy does not provide for an appeal mechanism – a complainant cannot appeal a UDRP decision to a subsequent panel.

 

Here, Complainant is essentially arguing that the principle of res judicata does not apply or that the matter should be reheard anyway, for two reasons: (i) a wrong respondent was named in the previous UDRP proceedings; and (ii) the previous panelists committed "serious misconduct".

 

The question for this Panel to decide is whether the principle of res judicata applies. If it does, then this Panel should not and will not rehear this case. Contrary to Complainant's contentions, this Panel is not aware of any rule or principle which would warrant a UDRP case to be reheard by a subsequent panel notwithstanding that the principle of res judicata applies.

 

Based on the parties' submissions and evidence, this Panel considers the principle of res judicata applies and bars the current Complaint. The Panel considers that the two reasons put forward by Complainant are not valid reasons to warrant a re-hearing of this case. The first reason (i.e. a wrong respondent was named in the previous UDRP proceedings) was essentially a confession that Complainant made a mistake by naming the allegedly wrong respondent in the previous UDRP proceedings (although this Panel notes from the previous decision that the registrar did confirm that the correct respondent was named); whereas for the second reason (i.e. the previous panelists committed "serious misconduct"), what Complainant is arguing really is that the previous panelists did not interpret the principles/evidence in Complainant's favour – these arguments amount to an appeal on merits but not really about the panelists' conduct (or misconduct). Furthermore, in terms of substance, it appears to this Panel that Complainant has not raised any new evidence or change of circumstances since the First Proceeding which might or would warrant a re-hearing of this case by this Panel; the only noticeable difference in the current Complaint is that Complainant has named a "correct" Respondent (apparently rectifying Complainant's alleged mistake in the First Proceeding) but the Respondents in both cases appear to be the same person (i.e. Carl Gregory) or at least belong to the same group of business. Complainant is not suggesting that there has been a change of ownership which has broken the chain of registration (which might be a reason for a subsequent panel to re-consider the case).

 

For the above reasons, this Panel dismisses the Complaint based on the principle of res judicata.

 

REVERSE DOMAIN NAME HIJACKING

It appears to this Panel that this is a case where the principle of res judicata clearly applies (and Complainant was clearly aware of this risk). The reasons for re-hearing put forward by Complainant are inappropriate and insufficient – in particular Complainant ought to have realized that alleging serious misconduct against panelists is a very serious matter and those allegations should not have been lightly made without credible supporting evidence. What Complainant argues here is really its disagreement with the previous panelists' determination of the matter on merits – this is not an issue of the panelists' conduct (or misconduct) at all. To this Panel, this case is a speculative re-filing of the previous complaint and Complainant (especially since it is legally represented) knew or should have known that this re-filed Complaint could not reasonably succeed. For these reasons, this Panel makes a finding of Reverse Domain Name Hijacking against Complainant.

 

DECISION

It is Ordered that the <scoopsoldier.com> domain name REMAIN WITH Respondent.

 

 

 

Eugene I. Low, Panelist

Dated: September 12, 2024