The Dutch electronics giant first brought a case before the
World Intellectual Property Organisation’s (WIPO’s) arbitration
forum over the name against Relson Limited, a UK company.
That case was thrown out, without Relson filing any defence,
because Philips failed to prove that Relson had no legitimate
purpose for registering the domain name.
In fact, Philips was criticised by the WIPO panel in its
November 2001 decision because “there are not even assertions [of
no legitimate purpose] unmet by the failure of [Relson] to file a
response” and Philips had “fallen very far short of the mark” in
trying to prove bad faith.
Last month, Philips lost its second action against the same
party over the same domain name. It brought the second case,
claiming that it had uncovered fresh evidence against Relson.
Philips used an internet investigative firm, NetSearchers (now
part of Register.com), to investigate Relson. NetSearchers found
that Relson owned “numerous” domain names containing trade marked
terms.
David Bernstein, the sole panellist in the latest decision,
explained that the rules followed by WIPO do not allow for appeals.
Instead, the rules say that if a party does not like the result of
a panel decision, that party should “pursue any available remedies
in a court” – as opposed to taking the case before another WIPO
panel.
Bernstein noted that there are limited grounds for a re-hearing
of a case, although these are basic principles of common law – not
actually from the rules written for WIPO. The grounds are:
- Serious misconduct by a judge, juror, witness or lawyer;
Perjured evidence;
- The discovery of credible and material evidence which could not
have been reasonably foreseen or known at trial; and
- A breach of natural justice.
With respect to Philips’ claim that new evidence justifies
re-hearing the case, Bernstein quoted from another WIPO panellist
who set a three-part test for determining whether new evidence
justifies the re-filing of a complaint:
A party must prove that the evidence could not have been
obtained with reasonable diligence for use at trial;
The new evidence must be such that it would have an important
influence on the result of the case; and
The evidence must appear to be credible, although it need not be
incontrovertible.
Bernstein concluded that there was simply no good reason why
Philips could not have employed the services of NetSearchers in the
first case. He added:
"This decision should not be read as a
vindication of Relson Limited. If Relson Limited has in fact
engaged in activity that constitutes abusive cybersquatting, then
it should be stopped, and it should be stripped of this domain
name. In light of [Philips’] failure to conduct proper due
diligence before filing its first complaint, though, [it] can no
longer achieve that result through the [rules followed by WIPO],
and thus, must now explore other options, such as filing suit in
the appropriate national court.”
