Authentic Brands Group LLC filed a second UDRP to get the typo-domain Authentlc.com, which uses the letter “L” instead of “i”. The Complainant asserts that the domain is being used maliciously, to meddle with official business of the multi-billion dollar company.
The first filing was made in July 2024 and the decision was to deny the domain’s transfer. In that case, the Complainant did not expressly assert that it has common law rights in its mark, alleging instead that it has operated under the AUTHENTIC BRANDS mark since 2008, but submitting no supporting evidence.
The UDRP process allows for the re-filing of a case, as long as new information has been made available. In this new filing, the Complainant has refiled the same case and same evidence without addressing the deficiencies in the evidence highlighted by the Panel in the Previous UDRP Case regarding the public recognition of its mark.
As such the Panel in this refiled case had no option other than to dismiss the Complainant’s case.
Final decision: Deny the transfer of the domain name Authentlc.com for the second time.
The domain transfer was denied.
Authentic Brands Group, LLC v. Shipley Marmion
Claim Number: FA2409002117143
PARTIES
Complainant is Authentic Brands Group, LLC (“Complainant”), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Shipley Marmion (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is authentlc.com, (the “Domain Name”) 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.
Dawn Osborne as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on September 24, 2024; Forum received payment on September 24, 2024.
On September 24, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the authentlc.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 September 25, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@authentlc.com. Also on September 25, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2024 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Res Judicata, Refiling on same issues and evidence
The Complainant has refiled its Complaint with the same case and evidence put forward before a previous UDRP Panel.
Quoting from the Complaint in this refiled case:
“Complainant previously filed a UDRP Complaint against the Domain Name. See Authentic Brands Group, LLC v. Shipley Marmion, Case No. FA2406002104055. Complainant’s relief was denied due to what Complainant believes to be the Panelist’s misunderstanding of the evidence presented. The fraudulent email .. is not from Complainant or Complainant’s employee. Complainant stresses that it is a fraudulent email sent by Respondent’s fraudulent email address peng@authentlc.com. Note that Mr. Eng’s actual email address is peng@authentic.com, which is almost visually identical to the fraudulent email address, and thus likely how the Panelist confused the evidence presented, thus improperly denying relief sought.”
However, it is apparent from the actual decision in Authentic Brands Group, LLC v. Shipley Marmion, Case No. FA2406002104055 (‘the previous UDRP Case’) that the Panel did not make the error the Complainant suggests. In fact, the reason the Complainant failed to succeed in the Previous UDRP Case is that the Panel held that the Complainant had failed to show it had common law rights in the mark AUTHENTIC. When making this finding the Panel said:
“Absent, however, is any evidence of the extent of advertising using the mark, and the degree of actual public recognition or association of the mark with Complainant. The evidence presented falls far short of establishing common law rights in the mark. Complainant has failed to meet the requirements of Policy ¶ 4(a)(i).”
With reference to Bridgewater Associates, LP v. Private Registration, FA 1650226 (Forum Jan. 18, 2016) (“Prior UDRP panels have established four grounds under which a rehearing of a UDRP case will be allowed: 1. serious misconduct on the part of a judge, juror, witness or lawyer; 2. perjured evidence having been offered to the court; 3. the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial; or 4. a breach of natural justice.”). This is not such a case.
Following Hassan Shams v. Private Registration / WhoisGuardService.com, FA 1703556 (Forum Dec. 22, 2016) (“Typically, complaints may not be resubmitted for relief subsequent to their denial due to res judicata principles unless the complainant meets its high burden of demonstrating the need for such additional review.”).
Quoting Walter Arnstein, Inc. d/b/a The Natural Sapphire Company v. TransPacific Software Pvt. Ltd., FA 1392515 (Forum July 20, 2011) (“A range of views has been expressed by prior Panels regarding the precise burden facing a complainant filing a duplicative complaint…. Nonetheless, under any of these views, the complainant fails to meet such burden if it fails to offer new evidence regarding the grounds upon which the prior panel denied relief. Here, the only new evidence provided by Complainant relates to the issue of bad faith in registration and use. As that issue was not the basis of the prior panel’s decision, Complainant fails to meet its burden.”).
Accordingly following AMP Floracel v. Jean Perrin, FA 1358993 (Forum Dec. 20, 2010) (“Because the claim brought by the Complainant in this case is identical to the claim raised previously, and no new grounds have been submitted to warrant reconsideration, the Complaint is dismissed based on the doctrine of res judicata.”).
See also Sarten Ambalaj Sanayi ve Ticaret Anonim Sirketi v. Stanley Pace, FA 1679265 (Forum July 21, 2016) (“The Complainant is barred by the principle of res judicata from pursuing this proceeding and re-litigating issues already decided by the WIPO Panel.”).
The Complainant has refiled the same case and same evidence without addressing the deficiencies in the evidence highlighted by the Panel in the Previous UDRP Case regarding the public recognition of its mark. As such the Panel in this refiled case has no option other than to dismiss the Complainant’s case.
DECISION
Accordingly, it is Ordered that the authentlc.com REMAIN WITH Respondent.
Dawn Osborne, Panelist
Dated: October 16, 2024
