Exercising Discretionary Authority to Request Additional Statements and Documents
Rule 12 of the Rules of the Policy authorize a Panel “in its sole discretion” to request “further statements or documents from either of the parties.” The purpose is to assist the Panel in reaching a decision. However, panelists have exercised their “sole discretion” in widely different ways; sometimes circumspectly, other times not at all, still other times seeming to compel production of documents to make the case certain for one of the other party. The question is, To what extent should the Panel supplement the record? There are clear cases in which the Complainant has failed to submit a full record and has not been helped out even though the evidence points to abusive registration. A recent example is Brent Redmond Transportation, Inc. v. SSI Express, D2008‑1765 (WIPO December 30, 2008) (<brentredmondtransportation.com>). The Panel – stating that his decision was “not intended as slavish insistence on procedure or the final stroke in a game of “gotcha” – found the Complainant’s proof deficient and dismissed the complaint. He even found that “the facts pleaded in the Complaint, if true, make out a garden‑variety case of cybersquatting: a newly‑formed company registers a domain name incorporating a competitor’s mark and re‑directs Internet users seeking Complainant to the competitor’s website.” In like circumstances, other Panels would have issued a Procedural Order.
In DigiPoll Ltd. v. Raj Kmar, D2004-0939 (WIPO February 3, 2005) the Panel asked and the Complainant responded by clarifying its position with documentary proof sufficient to win transfer of the domain name. In contrast, the three member Panel in Helen of Troy Limited v. Mailadmin, Ltd. and Vitali Fed, D2005-0371 (WIPO July 15, 2005) opted not to request further “statements or documents” through a Procedural Order and dismissed the complaint because it could not “tell from the record submitted if Complainant has any legitimate claim to these registrations or not.”
The Panel in Fast-teks, Inc. v. Rescuecom Corporation, D2005-0683 (WIPO September 29, 2005) issued a Procedural Order “[i]n light of Respondent’s questioning of whether Complainant had adequately established through evidence, the existence of its alleged license.” The Complainant thereupon “provided a copy of the license agreement in question. In further compliance with the Procedural Order, Complainant [also] provided evidence that ML Capital’s trademark has now been federally registered.” In contrast, the Panel in Fasthosts Internet Ltd v. Jamie Scott, Smudge It Solutions Ltd., D2008-0841 (WIPO July 24, 2008) issued the Procedural Order with some misgiving – “it is questionable whether it was appropriate for the Panel to have issued the procedural order that it did in this case” – because it “is for the complainant to prove its case and it not for a panel to do so on a complainant’s behalf”. The Panel nevertheless decided to give the Complainant “an opportunity to address a number of gaps in its case. It did so because the Complainant was not legally represented
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.
Similarly, in Leonard Hardy v. Amrit Resort, D2008-0698 (WIPO July 21, 2008), a decision by a 3-Member Panel denying the complaint, the Panel found a paucity of evidence that the trademark was well known internationally as the Complainant alleged. For this reason it “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 further statement in response to the Procedural Order, however, did not support the Complainant’s contention and the Panel denied the complaint.
An example of how far a Panel will reach to obtain further evidence is Renalo Investments Limited v. Dot Coms, Inc. / Mr. Fulviu Fodoreanu, D2008‑1791 (WIPO February 28, 2009). The Respondent alleged that the Complainant’s facts were “fabricated” to “create confusion and deceipt [sic] to infringe on our patented invention <sentimente.com> and should be ignored by this panel, and the complaint should be dismissed.” The question was, Who was fabricating to confuse? The Panel noted two different kinds of problems with the Respondent’s submission. First, its alleged patent or patents applications to the USPTO for software were dated subsequent to the institution of the UDRP proceedings, thereby highlighting its misguided attempt to improve its position. Second, the Respondent refused to produce evidence requested by the Panel to supplement the Record, thereby undermining its credibility.
Setting aside the unusual scope of the Procedural Orders in Renalo, the Panel simply wanted more evidence to supplement deficiences in the Record, to prompt the Complainant to establish priority of rights or the Respondent to demonstrate rights or legitimate interests. The Complainant had to provide “relevant evidence of the registration and use of the domain name <sentimente.ro> in 2001 and/or prior to January 3, 2002 [the date of registration of <sentimente.com>]. The Respondent was directed to “produce documentary evidence supporting or in connection to [its] statement of ‘have been promoting and selling the software to numerous prestigious companies’ such as copies of communication sent and also received from such companies before November 20, 2008.” The Panel gave each party an opportunity to produce documentary evidence under its custody and control. The Complainant complied with the Procedural Order. The Respondent did not; rather it “indicat[ed] that the communications pertaining to the software transactions were ‘sealed under confidentiality agreement and thus could not be disclosed’ to the Panel.” Since it refused to produce its evidence and the Complainant did the Respondent could not establish any rights or legitimate interests in the disputed domain name.