The Freename Forum

Two companies from the same industry are in dispute for the second time over the domain scoopsoldier.com. One year after the initial decision, the complainant lodged a further appeal, complaining of serious misconduct on the part of the previous three-member panel. However, this did not get her past the preliminary review by the new panelist.

Scoop Soldiers Services Company LLC, based in New Jersey (USA), believes that its rights have been infringed by the domain scoopsoldier.com. It uses the domain scoopsoldiers.com itself and is the owner of the trademark “SCOOP SOLDIERS” registered with the United States Patent and Trademark Office (USPTO). The complainant had already conducted UDRP proceedings before The Forum in 2023 regarding the domain scoopsoldier.com and lost (The Forum, Claim Number: FA2307002053790). It is currently arguing that this decision is a misjudgment. At the time, it had conducted the proceedings against Carl Gregory, the owner of Top Paw Distributing LLC. He was the legal representative of the actual domain holder Top Paw Distributing LLC. In fact, however, the proceedings should have been conducted against Top Paw Distributing LLC, the actual domain holder, which is now being done. The complainant believes that the matter must be renegotiated, even if the panel is of the opinion that the matter is closed due to the principle of res judicata. The three-member panel in the preliminary proceedings had made a serious error of judgment, as it had assessed the “SCOOP SOLDIERS” trademark as merely descriptive, rejected the trademark rights and granted the respondent Gregory comprehensible reasons for the choice of domain. Although the complainant had registered its trademark three years before the opponent registered the domain, the panel of the preliminary decision found that the complainant had no rights to the trademark “SCOOP SOLDIERS”. The Panel made its own assessment in opposition to the USPTO, which proceeded to register the mark. The Panel also allowed a proceeding against the wrong opponent, Mr. Gregory, when Top Paw Distributing LLC was the real opponent. If the proceedings had been successful, the appellant would not have been able to enforce the decision because it would have been issued against the wrong person. Such an omission by the panel of experts was inexcusable and should be corrected. Furthermore, the panel had relied on the false information provided by Mr. Gregory. He had stated that he did not know the complainant and her trademark and that he had registered the domain based on a suggestion from his registrar GoDaddy. The domain contains the registered trademark “SCOOP SOLDIERS”, a fanciful term; it is simply not plausible that GoDaddy would recommend a domain name consisting of a fanciful term such as “SCOOP SOLDIER(S)” based on the concept of pet waste removal services offered by both parties.

The opponent Top Paw Distributing LLC, represented by Carl Gregory, argues, among other things, that the complainant had a period of ten days after the decision a year ago to take action against it. It had not used this. In the current proceedings, she is still using the same allegations with which she failed completely, only this time she is citing additional case law. Apart from that, he, Carl Gregory, is the owner of the domain scoopsoldier.com. This is a case of reverse domain name hijacking (RDNH).


Attorney Eugene I. Low from Hong Kong was appointed as the decision-maker, who already dismissed the complaint in the preliminary examination and determined RDNH (The Forum, Claim Number: FA2408002109450). Low explains that resubmitted UDRP complaints are precluded by the principle of res judicata. Only in very limited circumstances could panelists accept such UDRP complaints. The complainant justifies the exclusion of the principle of res judicata in this case with two arguments: The first proceeding was against the wrong opponent and the three-judge panel made the wrong decision. On the basis of the parties' submissions and the evidence, Low is of the opinion that the principle of res judicata applies and that the present appeal is excluded. In his view, the complainant's arguments do not hold water because, on the one hand, she admits that she sued the allegedly wrong party and, on the other hand, criticizes the fact that the three-judge panel did not interpret the procedural principles and the evidence in her favor. These arguments amounted to a complaint on the merits, but not really on the conduct (or misconduct) of the three panelists. The appellant had not presented any new evidence or argued a change in circumstances. All that had changed was the opponent “correctly” named by the appellant to correct her alleged error from the first proceedings. The opponents in both cases appear to be one and the same person or at least to belong to the same group of companies. A reason for a panel to re-examine the case would be if there had been a change of ownership that would have interrupted the chain of registration. However, the complainant does not argue that a change of ownership has taken place. Based on these circumstances, Low concluded that the appeal should be dismissed on the grounds of res judicata.

Low then considered the existence of RDNH. He found that this was a clear case where res judicata applied and that the appellant was aware of this. The grounds on which she reopened the proceedings were inadequate and insufficient. In particular, the complainant should have realized that an allegation of serious misconduct against a panel is a serious matter and that it should not be made lightly without credible evidence. What the complainant was alleging here was, in fact, merely her displeasure with the previous three-member panel's decision on the merits. For Low, this was a speculative re-appeal in which the legally advised appellant knew or should have known that she would not succeed. For this reason, this was an RDNH.

The 2024 UDRP decision on the domain scoopsoldier.com can be found at:
https://www.adrforum.com/DomainDecisions/2109450.htm

The 2023 UDRP decision on the domain scoopsoldier.com can be found at:
https://www.adrforum.com/domaindecisions/2053790.htm