A complaint in a UDRP proceeding is a procedure that combines a pleading with a motion for summary judgment. Whatever evidence a party has in support for or defense of the claim for abusive registration must be presented with the pleadings or risk losing the ability to supplement the record. Evidence withheld to gain a tactical advantage (because it supports the adversary) or for other reasons (failed to think of its value) can be costly. Parties do not have the right to submit further statements or documents, although there is a variance in this respect between the supplemental rules of WIPO and the National Arbitration Forum, the latter allowing for what in essence is a reply and sur-reply.
However, Rule 12 of the Rules of the Policy reads: “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” The decision to issue a procedural order is discretionary with the panelist, which was done in Fasthosts Internet Ltd v. Jamie Scott, Smudge It Solutions Ltd., D2008-0841 (WIPO July 24, 2008), but, with a confession:
Lastly, it is worth noting that it is questionable whether it was appropriate for the Panel to have issued the procedural order that it did in this case. It is for a complainant to prove its case and it is not for a panel to do so on a complainant’s behalf. Notwithstanding this, the Panel decided in this case to issue an order providing the Complainant with an opportunity to address a number of gaps in its case. It did so having noted that the Complainant was not legally represented, may not have been legally advised and because the gaps in question were ones that it seemed the Complainant might have been able to fill. However, so far as the issue of bad faith registration was concerned, the Complainant chose not to avail itself of that additional opportunity.
The procedural order was also discussed in Leonard Hardy v. Amrit Resort, D2008-0698 (WIPO July 21, 2008), a decision by a 3-Member Panel denying the complaint. In this case, the Panel, finding a paucity of evidence that the trademark was well known internationally as the Complainant alleged, “ordered the Complainant to furnish evidence specifically concerning the use of the mark online or in Nepal at the time the Domain Name was registered, giving the Complainant an opportunity to make a fuller record.” The Panel received the further statement, but alas
In this case ... the “evidence furnished by the Complainant in response to that order does not cite any advertising or sales in Nepal. The supplemental evidence does show that the Complainant began to advertise its products online with the unregistered COLONIX mark in early 2002, in English, Polish, and Hungarian, on three herbal health websites, including the Complainant’s own. There is no evidence indicating the level of international advertising and sales or showing the number of website visitors at that time, either globally or regionally.
The Procedural Order in both Fasthosts Internet and Leonard Hardy availed the Complainants not a bit, since neither submitted the proof necessary to support its case.
Interestingly, not all panelists are so liberal in issuing procedural orders. For example, the 3-Member Panel in Helen of Troy Limited v. Mailadmin, Ltd. and Vitali Fed, D2005-0371 (WIPO July 15, 2005) dismissed the complaint because it could not “tell from the record submitted if Complainant has any legitimate claim to these registrations or not” and it opted not to request further evidence through a procedural order. In contrast, the Panel in DigiPoll Ltd. v. Raj Kmar, D2004-0939 (WIPO February 3, 2005) asked and the Complainant responded by clarifying its position with documentary proof sufficient to win transfer of the domain name.
In construing Rule 12, there are specifically two areas of factual research that panelists are authorized to take on their own initiative, inspecting the respondent’s website and researching the public record. These are discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Paragraph 4.5 reads:
Consensus view: A panel may visit the internet site linked to the disputed domain name, order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. If the panel feels that it requires further information to make a decision in a proceeding then it can issue a panel order to the parties.
Inspecting the respondent’s website is typically necessary in fair use and free speech cases to examine its content whether it is what it is purported to be. Researching the public record is typically associated with corroborating allegations of trademark right, for example, accessing the PTO database.
If unsolicited supplemental submissions are received, they have been accepted in limited circumstances, for example 1) when offered to present pertinent new evidence not reasonably available until after the party’s initial submission, Top Driver, Inc. v. Benefits Benefits, D2002-0972 (WIPO January 7, 2003); 2) to bring new and highly relevant legal authority not previously available to the attention of the panel, Pet Warehouse v. Pets.Com, Inc., D2000‑0105 (WIPO April 13, 2000); and 3) to rebut arguments of the opposing party that could not reasonably have been anticipated, Interactive Study Systems Inc. v. BFQ, D2008-0205 (WIPO April 2, 2008). Unacceptable are supplemental submission that simply reargue the same issues already submitted, World Wrestling Federation Entertainment, Inc. V. Ringwide Collectibles, D2000-1306 (WIPO January 24, 2001).