Philips cybersquatting claim dismissed as double jeopardy

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.”