Comment: The doctrine of laches is invoked
to prevent unfairness to defendants due to unnecessary delay by the Complainant
in filing the initial complaint. It is an equitable version of the Statute
of Limitations which prohibits filing certain specified types of complaints
after a stated period of time. The UDRP does not specifically address
either of these concepts.
Reporter's Notes: Where intervening events have delayed active use
of the site (as for example, when the domain has been on "hold"), laches
will not be applied to defeat the Complaint. D2000-1072;
D2003-0262
CHAPTER 1.2 – JURISDICTION (Does the
UDRP apply to your domain registration?)
Topic 1.2.1 - Jurisdiction Over Domain Names
Registered Before the UDRP Took Effect.
Registrants who fail to request
that their registration be canceled and their domain deleted from the registry
are bound by the UDRP.
Comment: All of the NSI Registration Agreements (which apply
to initial registration and maintenance and renewal periods prior to adoption
of the UDRP) that are referred to in Panel opinions included some provision
that binds the registrant to succeeding dispute policies.
Illustration: One such clause reads: "Registrant
acknowledges and agrees that these guidelines may change from time to time
and that, upon thirty (30) days posting on the internet, Network Solutions,
Inc., may modify or amend this Policy, and that such changes are binding
upon Registrant." See
Paragraphs 8 and 9 of Version 5.7 of the NSI Service Agreement.
Reporter’s
Notes: Where Respondent maintained
registration with NSI after NSI adopted the UDRP, Panels have held that
Respondent is bound by the UDRP: NAF/FA94349;
WIPO/D2000-0017.
Respondent
renewed registration after NSI’s Agreement 4.0 took effect but before ICANN
Policy added to NSI Agreement: NAF/FA93564
(but see also doubts raised in dissent – agreeing with majority that the
Panel had power and duty to determine whether it had jurisdiction but questioning
whether public policy concerns, if raised, would have brought about a different
effect).
CHAPTER 1.3 – PROOF
IN GENERAL (What facts must
be proven and by whom?)
Topic 1.3.1
– Standard Of Proof
Section
1.3.1.1 – Burden of Proof (How much proof is necessary?)
In the administrative
proceeding, the Complainant must prove that each of the three elements contained
in Section 4(a) of the Policy are present.
UDRP Policy Paragraph 4(a)
Comment: In general, the Panels recognize a preponderance
of the evidence standard. Preponderance of the
evidence means that a fact is proved when it is more likely than not that
the fact is true.
Within the element of bad faith,
debate exists as to whether the domain must be registered and used
in bad faith or whether either bad faith registration or bad faith
use is sufficient. The Policy uses the language
“your domain name has been registered
and is being used in bad faith.” UDRP Policy,
Paragraph 4(a)(iii). See Division 3: Bad Faith for further discussion.
The debate is serious
enough that the eResolution Complaint and Response forms had codified the
disputed interpretation. If the parties read
the eResolution "and/or" language to allow submission of materials concerning
bad faith registration or bad faith use, they could unwittingly fail
to meet their burden if the Panel requires both bad faith registration and
bad faith use.
Reporter’s Notes: Complainant bears burden of proof to show the three
elements required under Policy 4(a): Nintendo of America, Inc. v. Pokemonplanet.net,
Jerry Radl, and Fusion Media Solutions, Inc., WIPO/D2001-1020.
Complainant is required
to substantiate its Complaint in order to sufficiently make out a case.
If in the light of the statements and documents presented doubts remain,
the Complaint cannot be allowed: Formula One Licensing BV v. Formula One
Internet, WIPO/D2000-0193.
The burden of proof
is not satisfied by a mere showing of suspicion: WIPO/D2000-0067.
Simply stating the reasons will not normally be sufficient to meet the Complainant’s
burden of proof. (Ferrari S.p.A v. Pierangelo Ferrari, WIPO/D2001-1004;
Pomellato S.p.A. v. Richard Tonetti, WIPO/D2000-0493;
Corneliani F. Ili Claudio e Carlalberto Corneliani S.p.A. v. Corantos
s.r.l., WIPO/D2000-0759.
Assertions that any use of the Domain Name by another party would likely
mislead or deceive the Complainant’s customers, without evidence, is not
of much use. (Capt’n Snooze Management Pty. Ltd. v. Domains 4 Sale,
WIPO/D2000-0488).
Panel must not deal
with propositions not asserted. (See The Estate of Gary Jennings
and Joyce O. Service v. Submarine and J. Ross, WIPO/D2001-1042.).
It is for the Complainant to plead the issues and to support them with some
arguments and evidence. (Jones Apparel Group, Inc. v. jonesapparelgroup.com,
WIPO/D2001-0719;
Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, WIPO/D2001-0348;
Club Monaco Corporation v. Charles Gindi, WIPO/D2000-0936;
Tyco International Services AG and Tyco International (U.S.) Inc. v. Paul
Quinn, WIPO/D2000-1740;
and Arturo Salice S.p.A. v. Paul Izzo & Company, WIPO/D2000-0537.
Generally, the appropriate
standard in these proceedings is preponderance of evidence; however, in
other jurisdictions other standards may apply: WIPO/D2000-0847.
Section
1.3.1.2 – Burden of Proof In Cases Where Respondent Defaults (What happens when
the Respondent does not respond?)
If a Respondent defaults,
the Complainant must still make a prime facie showing that Complainant is
entitled to transfer of the domain name; however, the Panel may draw reasonable
inferences of fact from Complainant’s allegations and accept them as true.
Cross-Reference: See “Rule 14: Default”
for further discussion on the subject of defaults.
Section 1.3.1.3
– Burden of Proof in Reverse Domain Name Hijacking Claims
While the Rules do not state a burden of proof regarding reverse domain name hijacking,
the mere filing of a Complaint cannot be proof of bad faith; otherwise every
unsuccessful domain name Complaint would be subject to a finding of abuse
of administrative process
Reporter’s Notes:
Mere filing of a Complaint
cannot be proof of bad faith: DeC/AF-152
Topic 1.3.2
– Burden Shifting
Section 1.3.2.1
– Burden Shifting in 4(a)(ii)
Once Complainant makes
out a prima facie showing on 4(a)(ii), the burden shifts to the Respondent
to rebut the showing by providing evidence that it has rights to or legitimate
interests in the domain name.
Comments: The concept of burden shifting is derived from Paragraph
4(c) of the Policy, entitled “How to Demonstrate Your Rights to and Legitimate
Interests in the Domain Name in Responding to a Complaint,” which discusses
the kind of evidence a Respondent should provide to show that it has rights
to or legitimate interests in the domain name.
There is a debate
concerning which burden is shifting. Some decisions
state that the burden of proof shifts while others maintain that it is not
the burden of proof but rather the burden of production that shifts since
the Policy states that it is the Complainant that must prove that the elements
in 4(a) are present. Regardless of the outcome
of the debate, it is clear that the Respondent must address paragraph 4(c)
of the Policy once Complainant has made a prima facie showing on paragraph
4(a)(ii) of the policy.
Reporter’s Notes:
Burden of proof shifts: WIPO/D2000-1106;
WIPO/D2000-1467,
WIPO/D2001-0809.
Burden of production
shifts: WIPO/D2000-0270;
followed by WIPO/D2000-0252. See also WIPO/DTV2001-0013.
CHAPTER
1.4 – APPROPRIATE SUBJECT MATTER (What subjects
should Panels consider when deciding a dispute?)
Topic 1.4.1 – Issues of Fact (Should Panels decide which facts are true?)
While inherent limitations
of the dispute resolution process may make it inappropriate to decide a
factual issue in certain circumstances, the mere existence of a genuine
dispute of material fact should not preclude a Panel from weighing the evidence
before it and reaching a decision.
Caveat: The rule for this section was taken from the frequently
cited case WIPO/D2000-0847;
however, uncertainty remains as to which types of claims or legal issues
are not suitable for Panel consideration.
Comments: When faced with an issue of fact, a Panel may request
additional information from the parties.
If a panel determines
that a Complainant has satisfied its burden by a preponderance of the evidence,
the existence of conflicting accounts does not preclude a Panel from reaching
a decision because the Parties retain the option of pursuing the matter
in a forum that allows for full discovery and live testimony.
Reporter’s Notes:
Factual disputes, questions of credibility of witnesses, and matters
of trademark law, as well as other legal issues, are beyond the scope of
the disputes intended to be resolved under the Policy. These matters go
considerably beyond the scope of issues that can be fairly resolved on a
document-only basis and within the short deadline for making decisions:
WIPO/D2000-0955.
Claims concerning
beach of fiduciary duty, breach of contract, and the original rightful ownership
should be pursued in a court of law: NAF/FA95285.
Proceedings not conducive
to credibility determinations given the lack of discovery and live testimony:
WIPO/D2000-0270.
Proceeding not the
appropriate forum for resolving disputed issues as to fact or motive where
there is room for reasonable doubt, except by resolving the doubt against
the Party bearing the burden of proof: WIPO/D2000-0950.
Panel may request additional information: WIPO/D2000-0017. See also UDRP Rule 12.
Conflicting evidence does not preclude a Panel
from reaching a decision because the Parties retain the option of pursuing
the matter in a court of law: WIPO/D2001-0237.
Mark Gurevich (Harvard Law School ’04) contributed to this Section.
Topic 1.4.2 – Claims
of Trademark Infringement
If the
claims relate to traditional infringement, rather than bad faith, they belong
in a court of law.
Comment:
Traditional infringement of trademark relates to a somewhat different set
of acts, although many of them may also constitute bad faith. For example,
a second company may adopt a mark similar to an older company. The newer
company may be liable under traditional trademark infringement if it is
selling the same kind of goods. It may not be liable under traditional infringement
if it is selling very different goods or sells in a far distant nation from
the first company. Regardless of the presence or absence of traditional
infringement, if the second company is a bona fide entity and used the domain
name for legitimate business purposes prior to notice of the UDRP complaint,
it would have a legitimate right and interest under the UDRP Section 4(c)
and would be entitled to retain the domain name.
While Complainant may have a cause of action
in United States Courts for alleged trademark infringement, the Panel must
decide the case strictly on the Policy criteria: WIPO/D2001-0082.
Since the Policy does not require Panels to
engage in trademark infringement analysis, the Panel declined to do so stating
“a court of law or a mutually agreed arbitration tribunal is the appropriate
venue for such an analysis”: WIPO/DTV2000-0005.
Panel would have declined to analyze the trademark
infringement claim even if the Panel had been presented with evidence on
trademark infringement because such claims are properly left to courts of
law: WIPO/D2000-0622.
Topic 1.4.3
– Existence of Common Law Trademark
Common law trademark
claims form a sufficient basis for a Complaint under paragraph 4(a)(i) of
the Policy.
Reporter’s Notes:
The Policy does not require that the Complainant should have a
registered trademark or service mark. It is sufficient that the Complainant
should satisfy the Administrative Panel that Complainant has rights in common
law trademark: WIPO/D2000-0210. See also WIPO/D2001-0059;
WIPO/D2000-1764.
Where Complainant
lacks a federal registration to provide proof of trademark rights, Complainant
must establish common law trademark rights: WIPO/D2001-0311.
Topic 1.4.4 – Establishing
a Common Law Trademark
Where Complainant’s
jurisdiction acknowledges common law trademark rights, Complainant can prevail
under the Paragraph 4(a)(i) if it can show sufficient use of the mark in
commerce to create such rights.
Reporter’s Notes:
For example, common law rights in the United States arise out
of use of a mark in commerce in connection with goods or services regardless
of “whether the mark is a traditional mark on goods or a personal name that
has come to be associated with particular services”: WIPO/D2001-0059;
followed by WIPO/D2001-0382. But, where the Complainant was a Turkish company
and where there was no evidence that Turkey recognizes common law trademarks,
the concept was deemed irrelevant: WIPO/D2000-1764.
Decisions have accepted
the following as evidence of a common law trademark:
1)
Advertising, marketing, or promotional use of the alleged common
law mark
2)
Third Party references to the alleged common law mark
3)
Widespread evidence of recognition among Internet users
4)
Sales of services under and by reference to the alleged common
law mark
5)
Appropriate showing of prior continuous use in a given product
and territorial market over a sufficiently long period of time
WIPO/D2000-1417,
WIPO/D2000-1523,
WIPO/DTV2000-0001, WIPO/D2000-1602. This
list is not meant to be exhaustive.
Cross Reference: See Division 2: Trademarks.
Topic 1.4.5 – Validity of Trademark
Registration
It is not the province
of the UDRP to review validity of registrations issued by national governments.
Reporter’s Notes: Panel had misgivings about the validity of
the trademark registration but declined to investigate stating that a court
of competent jurisdiction should decide the issue: WIPO/D2001-0233.
Where the Brazilian Institute of Industrial
Property, Brazil’s legal authority for granting trademarks, granted registration
for Complainant’s mark, “it lies totally beyond a Panel's powers under these
ICANN’s proceedings to discuss the validity of such trademarks”: WIPO/D2000-0461.
CHAPTER
1.5 – RES JUDICATA (When can a Complaint be
re-filed?)
Topic 1.5.1 – Definition of a Re-filed
Complaint
A re-filed Complaint
is a later Complaint about the same domain name, which is filed by the same
Complainant against the same Respondent to a previous Complaint
Comment: A Complaint that
does not involve the exact substance of the original Complaint, but nonetheless
involves the same Complainant, Respondent, and domain name will still be
considered a re-filed Complaint.
Reporter’s Notes:
Defining re-filed Complaints: WIPO/D2000-1490.
Topic
1.5.2 – Effect of Multi-Party and Multi-domain Disputes (What happens when there was more than
one Complainant, Respondent, or domain name involved in the original dispute)
A re-filed Complaint
is any subsequent Complaint brought by at least one of the previous Complainants,
against at least one of the previous Respondents, in relation to at least
one of the domain names subject of the previous Complaint.
Comment: A Complaint that does not involve the exact substance
of the original Complaint, but nonetheless involves at least one of the
same Complainants, at least one of the same Respondents, and at least one
of the same domain names will still be considered a re-filed Complaint.
Reporter’s Notes:
Defining re-filed Complaints: WIPO/D2000-1490.
Topic
1.5.3 – Re-filed Complaint Concerns Act(s) That Formed the Basis of the
Original Complaint
Where the re-filed
Complaint concerns act(s) that formed the basis of the original Complaint,
the re-filed Complaint will be considered if at least one of the following
factors is present:
(1)
The original Complaint was dismissed without prejudice;
(2)
The Panel in the prior proceeding expressly reserved the right
of the Complainant to raise a particular issue;
(3)
Serious misconduct on the part of a Panelist, attorney, or Party
to the proceeding;
(4)
A breach of natural justice;
(5)
A breach of due process in the prior proceeding; or
(6)
The discovery of credible and material new evidence which, with
the exercise of due diligence, would not have been reasonably available
at the time of the original hearing, and which would have had an important,
if not decisive, influence on the proceeding.
Comment:
This rule reflects the intermediate position espoused in the most
recent decisions.
Reporter’s Notes:
Leading decision: WIPO/D2000-1490;
followed by: WIPO/D2000-1619.
Original Complaint
failed to unambiguously allege sufficient facts that Respondent (who defaulted)
used the domain name in bad faith. The Complaint
was dismissed without prejudice, DeC/AF-287,
and later reconsidered, DeC/AF-587.
Issue reserved by Panelist in prior proceeding:
NAF/FA95842.
Topic 1.5.4 – Re-filed Complaint Concerns Act(s) Subsequent to
the Dismissal of the Original Complaint
Where
the re-filed Complaint concerns act(s) that occurred subsequent to the dismissal
of the original Complaint, the re-filed Complaint will be entertained as
a new action.
Reporter’s Notes: See: WIPO/D2000-1490;
and: WIPO/D2000-1619.
CHAPTER 1.6 – CHALLENGING NEW TOP LEVEL DOMAINS
Topic 1.6.1 – Sunrise Challenges
(.info)
Domain names registered
in the .info registry are subject to Sunrise Challenges until December 26,
2001, after which date domain names registered during the Sunrise Registration
Period will be subject to the UDRP.
Reporter’s Notes:
Guidelines
concerning Sunrise Challenges is available from WIPO.
Topic 1.6.2
– Complaints Concerning .biz
Domain names registered
in the .biz registry are subject to STOP Complaints, UDRP Complaints, and
RDRP Complaints depending on the timing and subject matter of the Complaint.
Reporter’s Notes: Information on
.biz is available from WIPO.
CHAPTER
1.7 – UDRP RULES
Respondent means the
holder of a domain name registration against which a Complaint is initiated.
UDRP Rule 1
Comment: While the language of Rule 1 makes
it clear that the Respondent is the holder of the domain name registration,
Panels have accepted the following persons as domain name holder
for the purposes of the proceeding:
1)
Registrants;
2)
Administrative contacts;
3)
Entities for which data is available in the WHOIS database of the
registrar of the domain name at stake;
4)
Persons who held themselves out as the owner, registrant, or administrative
contact;
5)
A party that has agreed to purchase a domain name, but does not
yet have control over the domain;
6)
Persons claiming to be the registrant although WHOIS database stated
differently; and
7)
Multiple persons who share the same contact information.
This list is not intended
to be exhaustive.
Reporter’s Notes:
Partial list of decisions considering the issue of who is considered
to be the domain name holder: WIPO/D2000-0118,
WIPO/D2000-0128,
WIPO/D2000-0198,
WIPO/D2000-0252,
WIPO/D2000-0364,
WIPO/D2000-0370,
WIPO/D2000-0477,
WIPO/D2001-0947,
NAF/FA93763,
NAF/FA94386.
Patrick Lewis (Harvard Law School ’04) contributed
to this Section.
A Panel
may, in its discretion, permit joinder of different domain holders.
Caveat: While some Panels have permitted joinder, neither the Policy nor the Rules provide for the naming of multiple
Respondents. This issue merits further consideration.
Comment: Neither the Policy nor the Rules
provide for the naming of multiple Respondents and Rule 1 indicates that
the Respondent in a UDRP proceeding is the holder of the domain name registration.
But See:
Panels have permitted
joinder where:
1)
Two entities’ domain names differed only by the TLD;
2)
Two domain name holders registered similar domain names and were
affiliated or closely linked;
3)
Two different domain-name holders whose address and administrative,
technical, and zone contact was the same;
4)
Respondents shared a postal address, administrative and billing
contact, address, and telephone number:
5)
Two Respondents each of which had registered two of the disputed
domain names; and
6)
The person who registered the domain name did so as agent or nominee
(principal was joined).
Reporter’s Notes:
Panel
dismissed 2 additional Respondents (the administrative contact and the entity
listed as registrant on WHOIS) because neither the Policy nor the Rules
provide for the naming of multiple Respondents and the Rules are quite explicit
that the Respondent in a UDRP proceeding is the registrant: WIPO/ D2001-0558. But see:
WIPO/D2000-1452
(Panelist allowed the administrative/billing contact, who acted as the real
owner, to be joined with the entity listed as the registrant on Network
Solution’s whois database).
The
Provider permitted joinder: WIPO/D2000-0717.
Most instances of
joinder have occurred where one party was acting as the agent or nominee
of another: WIPO/D2000-0147,
DeC/AF-106.
Other decisions considering
the issue of joinder: WIPO/D2000-0173,
WIPO/D2000-0192,
WIPO/D2000-0226,
WIPO/D2000-0587,
NAF/FA94301.
Mike Zarren (Harvard Law School
’04) contributed to this Section.
Registrar means
the entity with which the Respondent has registered a domain name that is
the subject of a complaint.
UDRP Rule 1
Comment: The term “Registration Authority” is often used
by Panels to refer to the Registrar of a ccTLD. In
addition, Registrar and Registration Authority are sometimes used interchangeably
(particularly when the Complainant and/or Respondent are non-US residents)
even if the domain is registered in a gTLD.
Reporter’s Notes:
Registration authority used to refer to the registrar of a ccTLD: WIPO/DTV2001-0010,
WIPO/D2000-1349.
Registration used
interchangeably with registrar where the domain registered is in a gTLD:
WIPO/D2001-0709.
Patrick Lewis (Harvard Law School ’04) contributed to this Section.
Topic 1.7.2 – Rule 3 – The
Complaint
Section 1.7.2.1 – Amending the Complaint
The Complaint may
be amended where it was filed at the same time as the commencement of the
proceeding, it promptly reported a new development that arose after the
filing of the Complaint, and where Respondent had a fair opportunity to
respond to the amendment.
Reporter’s Notes:
WIPO/D2000-0120
(citing WIPO/D2000-0121),
WIPO/D2000-0121.
Panel refused to allow
the Complainant to amend the Complaint by adding 11 additional domains,
recommending that Complainant raise the additional domains in a new proceeding:
WIPO/D2000-0541. Followed
by WIPO/D2001-0729.
Section 1.7.2.2 – Supplementing the Complaint
A Panel may, in its
discretion, accept supplements to the Complaint where the supplemental material
was filed before Respondent submitted his response
Reporter’s Notes:
WIPO/D2000-0235
Cross-Reference: See “Rule 12: Further Statements.”
Section 1.7.2.3 – Effect of Failure to Serve the Respondent
A Complaint will not
be automatically dismissed simply because Complainant failed to serve Complaint
to Respondent.
Comment: This is particularly true where Complainant is acting
on a pro se basis.
Reporter’s Notes:
NAF/FA94906, NAF/FA94907
Section 1.7.2.4 – Hard Copy Differed from the Copy Sent
by E-mail
Where the hard copy
of the Complaint differs from the copy sent by e-mail, the Panel will accept
the later submission as the Complaint.
Reporter’s Notes:
WIPO/D2000-0728
A Panel may, in its
discretion, accept responses that do not comply with the formal requirements
of Rule 5.
Comments: Panels are split as
to when they will consider a non-compliant response.
Some Panels have cited UDRP Rule 10(b)
(“the Parties are treated with equality and that each Party is given a fair
opportunity to present its case”) as authority for considering non-compliant
responses.
Reporter’s Notes:
Unlike Rule 4(b), which addresses deficiencies in the Complaint, the Rules
contain no similar provisions for treatment of Responses that fail to follow
the Rules; therefore, it is up to the Panel to determine whether to accept
the Response and how to treat the Response's deficiencies: WIPO/D2001-0558.
Panel considered non-compliant
response where:
Response
was filed after the deadline but before the Panel had begun its substantive
review: WIPO/D2000-0035.
Response
was filed after the deadline but did not prejudice the Complainant or
delay the proceeding: WIPO/D2000-0591.
Response
was filed after the deadline but where Respondent alleged a medical emergency:
NAF/FA94269.
Response
filed after the deadline was considered in order to avoid a miscarriage
of justice: NAF/FA95003.
Panel declined
to consider non-compliant response where:
Response
was sent two weeks after deadline, and where no confusion about deadline
existed, Respondent could have requested an extension, and Respondent was
a sophisticated person represented by counsel: WIPO/D2000-0009.
Service
Provider was unable to open the response attached to an e-mail within the
20-day period, and Respondent did not send the response in hard copy: DeC/AF-176.
Respondent
only sent an email: WIPO/D2000-0824.
Response
did not file a hard copy: DeC/AF-148.
Cross-Reference: Rule 10(b). Topic 1.7.6 - Rule 10.
Section 1.7.3.2 – Extensions for Filing the Response
At the request of
the Respondent, the Provider may, in exceptional cases, extend the period
of time for the filing of the response. The period may also be extended
by written stipulation between the Parties, provided the stipulation is
approved by the Provider.
UDRP Rule 5(d)
Reporter’s Notes:
Date of commencement: WIPO/D2000-0073,
WIPO/D2000-0118
Respondent’s request
for extension granted by the Panel: DeC/AF-290
Complainant agreed to Respondent’s request for a 14
day extension and WIPO approved: WIPO/D2001-0825.
Section 1.7.3.3 – Failure to Respond
If a Respondent
does not submit a response, in the absence of exceptional circumstances,
the Panel shall decide the dispute based upon the Complaint.
UDRP Rule 5(e)
Comment: Panels rarely find exceptional circumstances under
Rule 5(e). However, Panels have also considered
Rule 10(b) when deciding whether to consider a late response.
Reporter’s Notes:
Exceptional circumstances found where Respondent misunderstood the Rules
and the response sent to Complainant and to ICANN instead of to the Center:
WIPO/D2000-0263.
Panel
declined to find exceptional circumstances, but considered Respondent's
Response brief pursuant to the general powers and responsibilities set out
in Rule 10, specifically, Rule 10(b): WIPO/D2001-0830.
Cross-Reference: Rule 10(b). See Topic
1.7.6 - Rule 10.
Topic 1.7.4 – Rule 7 – Impartiality and Independence
Section 1.7.4.1 – Who May Be Recused (prohibited from
hearing the case)?
The Policy does not
give Panels the authority to order recusal of a Provider.
Comment:
Even if the Provider is biased, the Provider’s role is administrative
only. It is the Panel, which is required to
be impartial under Rule 7, that renders the decision.
Reporter’s Notes: WIPO/D2001-0558.
Section 1.7.4.2 – Raising Concerns
About a Panelist
While the Rules do
not indicate the method for raising concerns to a particular Panelist, Rule
8 allows parties to communicate with the Panel or Provider through the Provider
appointed case administrator; therefore, it is appropriate for a Party with
concerns about a Panelist’s impartiality to communicate with the Provider
through the case administrator in order to raise any such concerns and to
seek a prompt and fair resolution. In the event
the Provider declines to disqualify the Panelist, it is equally appropriate
for the Party to move for the Panelist’s recusal.
Reporter’s Notes: WIPO/D2001-0505.
Cross-Reference: Rule 8.
Topic 1.7.5 – Rule 8 – Communications Between Parties and the
Panel
Section 1.7.5.1 – Communications Between
Parties and the Panel
A
Panel may, in its discretion, accept unilateral communications from a Party
Reporter’s Notes:
Panel accepted Respondent’s amendment although the notice of the amendment
was mailed directly to the Panel in contravention of Rule 8: WIPO/D2000-0416.
Panel accepted an
e-mail Respondent sent simultaneously to the Provider, Complainant, and
the Panel, but refused to consider replies to the e-mail: WIPO/D2000-0730.
Topic 1.7.6 - Rule 10: General Powers of the Panel
Section 1.7.6.1 – Evidence Admitted by Panels under Rule 10(d)
(d) The Panel shall
determine the admissibility, relevance, materiality and weight of the evidence.
Rule 10(d)
Comments: Whether evidence of compromises and
offers to compromise should be excluded is currently under debate. Federal Rule of Evidence 408 (an American rule)
is sometimes cited. Brevity of UDRP procedure, and its existence
as an exclusive system for Internet naming disputes, calls for utilization
of hyperlinks where cited in pleadings, rather than requiring submission
of photocopies which merely adds to the cost of transferring documents to
globally-scattered panelists and parties.
Reporter’s Notes:
Admission of evidentiary material beyond the Complaint and Response is discretionary:
WIPO/D2000-0765.
Affidavits admitted:
WIPO/D2000-0017, WIPO/D2000-0161 (affidavits of Respondent and Respondent's
counsel), WIPO/D2000-0412 (affidavits of Complainant’s employees),
WIPO/D2000-0452
(affidavit of counsel), WIPO/D2001-0493
(affidavits to demonstrate preparations for bona fide use of the Domain
Names).
Sworn
statements admitted: WIPO/D2000-0124
(statement by Complainant's counsel), WIPO/D2000-0252
(statement of Respondent).
Communications sent
to the Panel by third parties were admitted: WIPO/D2000-0290.
Panel refused to accept
unauthenticated photocopies of public records, and particularly documents
reflecting typewritten and handwritten addenda, where the Complainant’s
rights depend on the authenticity of those addenda, to establish Complainant’s
intellectual property rights in a mark: WIPO/D2000-0336.
Section 1.7.6.2 –
Panel Conducting Independent Research
A Panel may, in its
discretion, conduct independent research.
Caveat: This rule reflects the reality that Panels frequently
conduct outside research. The Panels rarely
justify their independent research. Whether it
is advisable for Panels to conduct their own research or make decisions
based on the evidence in the record merits further consideration.
Reporter’s Notes: Panel visited Respondents’ websites: WIPO/D2000-0017,
WIPO/D2000-0405,
WIPO/D2000-0606,
WIPO/D2001-0820,
NAF/FA94392,
DeC/AF-187.
Panel
visited Complainant's website: WIPO/D2000-0139
(to verify use of mark), NAF/FA94865 (to compare content with Respondent’s website), DeC/AF-218
(to verify Complainant’s common law mark rights).
Panel conducted web
search about Complainant’s mark: WIPO/D2000-0405, WIPO/D2000-0927.
Panel
conducted WHOIS-database research: WIPO/D2000-0118,
WIPO/D2000-0140,
WIPO/D2000-0141,
WIPO/D2000-0335,
WIPO/D2001-0835,
DeC/AF-252.
Panel
visited an auction site to verify that the disputed domain name was offered
there: WIPO/D2000-0353,
WIPO/D2000-0604.
But see: Panel, citing Paragraph 8 of the NAF Supplemental
Rules, rejected as improper Respondent’s invitation to visit Respondent’s
site because the issues concerning domain name registration must be decided
on the evidence in the record: NAF/FA94964.
Panelist declining
to visit the website of the disputed domain: Nike, Inc. v. Crystal International,
WIPO Case No. D2002-0352
citing Randgold Resources Limited and Randgold & Exploration Co.Ltd.
v. Pico Capital Corp., WIPO Case No. D2001-1108
and Ascendes Corporation dba MarketTouch v. Market Touch Limited, WIPO Case
No. D2001-1186.
See also Section 1.7.6.3
below.
Section 1.7.6.3
– “Equal Treatment of the Parties” and “Fair Opportunity” Under Rule 10(b)
In all cases, the
Panel shall ensure that the Parties are treated with equality and that each
Party is given a fair opportunity to present its case.
Rule 10(b)
Comments: The ideas of “equal treatment” and “fair opportunity”
have received strong and widespread support. Therefore,
Panels tend to cite 10(b) in a variety of circumstances to ensure that justice
is served on a case-by-case basis.
Reporter’s Notes:
Panel declined to find exceptional circumstances under Rule 5, but
considered Respondent's Response pursuant to Rule 10(b): WIPO/D2001-0830.
Panel, citing Rule
10(b) accepted a late response: WIPO/D2000-0591.
Panel
cited fairness considerations and Rule 10(b) as authority for considering
unsolicited supplemental material: WIPO/D2000-0802.
Panel cites Rule 10(b)
as authority for accepting additional submissions from both parties: WIPO/D2001-0566.
Panel considered Rule
10(b) in determining that the language of the proceeding would be English:
WIPO/D2000-1759.
Panel, citing Rule
10(b), decided to accept all documentation, regardless of the language,
despite the fact that the language of the proceeding was English: WIPO/D2000-1215
Panel, refusing to view website
under disputed domain name, asserting that content posted after initiation
of proceedings would be non-probitive: Nike, Inc. v. Crystal
International, WIPO Case No. D2002-0352
But see:
Panel, citing Rule 10(b), stated that it was within the Panel’s
discretion to ignore the Respondent’s Response (but considered it nonetheless)
and declined to consider Complainant’s Reply because the initial filings
of the parties were sufficient to give both parties the fair opportunity
to present their cases: WIPO/D2000-1672.
Section 1.7.6.4
– Precedent
The Policy and the
Rules do not provide that an Administrative Panel is bound by or required
to follow precedent.
Comment: Although Panels are not bound by precedent, panels
frequently cite previous decisions.
Reporter’s
Notes: Panels not bound by precedent: WIPO/D2001-0974.
A few recent decisions
where Panels cited precedent nonetheless: WIPO/D2001-0913,
WIPO/D2001-0791,
WIPO/D2001-0742,
WIPO/D2001-0681,
WIPO/D2001-0304.
Section 1.7.7.1 – Choosing the Language, General Requirements
(a) Unless otherwise
agreed by the Parties, or specified otherwise in the Registration Agreement,
the language of the administrative proceeding shall be the language of the
Registration Agreement, subject to the authority of the Panel to determine
otherwise, having regard to the circumstances of the administrative proceeding.
(b) The Panel may
order that any documents submitted in languages other than the language
of the administrative proceeding be accompanied by a translation in whole
or in part into the language of the administrative proceeding.
UDRP Rule 11
Reporter’s Notes:
Panel applied French as the language of the proceeding after Complaint was
submitted in French, and because both parties were French: WIPO/D2000-0473.
Panel applied Spanish
as the language of the proceeding after Complaint was submitted in Spanish,
and because both parties were from Spain: WIPO/D2000-0540.
Panel proceeded in
Spanish because both parties had at least one of their residences in Argentina,
Spanish was the official language of Argentina and various exhibits were
in Spanish: WIPO/D2000-0815.
Panel accepted French
as the language of the proceeding although the language of the registration
agreement was English after both parties submitted their pleadings in French:
DeC/AF-208.
Where a Complaint
is made in a language other than that of the Registration Agreement,
and it is not clear that this poses no difficulty for the Respondent, the
Respondent should normally receive notice of the Proceeding in the language
of the Registration Agreement. Furthermore, if
the Complainant is seeking, or the Panel is considering, a determination
that the Proceeding be conducted in a language other than that of the Registration
Agreement, such proposal should be communicated to the Respondent, so that
it has an opportunity to raise any contrary arguments
Caveat: this Rule has not been tested
but is sensible because there is a risk that the Respondent may not appreciate
the true nature of the proceeding and may be deprived of a fair opportunity to present its case under Rule 10(b).
Comment: The requirements identified
above can be met through the availability of a coversheet in the language
of the Registration Agreement and through the inclusion in the Complaint
of appropriate submissions on the language of the Proceeding.
Topic 1.7.8 – Rule 12 – Further Statements
Section 1.7.8.1 – Further Statements Requested by the
Panel
In addition to the
Complaint and the response, the Panel may request, in its sole discretion,
further statements or documents from either of the Parties.
UDRP Rule 12
Comment: Rule 12 permits a Panel to request
further information that is relevant to the Complaint as filed by Complainant.
It is not directed towards obtaining further information that might be relevant
to some other Party or proceeding.
Although a Provider's
Supplemental Rules may specifically permit additional submissions and impose
a fee for doing so (see National Arbitration
Forum Supp. Rule 7 and the Instructions for
Filing Additional Submission Under Forum Supplemental Rule 7) it is the Panel
itself which decides whether or not to accept such submissions.
Reporter’s Notes: Panel requested further
statements: WIPO/D2000-0072
(ownership of the claimed marks, and current mark use), WIPO/D2000-0087
(lack of rights or legitimate interests of Respondent, and Respondent’s
assent to transfer the domain name for several hundred thousand dollars),
WIPO/D2000-0095
(Respondent’s investment in website, commercial use of website, knowledge
of Complainant’s mark, and ownership of other domain names by Respondent),
WIPO/D2000-0130
(generic or distinctive character of Complainant’s mark, bona fide offering
of goods sold under mark by Respondent, Respondent’s use of mark in its
brochure), WIPO/D2000-0132
(statements and documents from both parties with respect to Policy 4(a)(ii),
(iii), 4(b) and 4(c)), WIPO/D2000-0194
(documents supporting Complainant’s statements), WIPO/D2000-0238
(Complainant’s rights in mark), WIPO/D2000-0303 (Respondent’s company
name and marks, further information about bad faith registration and use),
WIPO/D2000-0309
(Respondent’s business plan), WIPO/D2000-0364
(relationship between registrant and administrative contact), WIPO/D2000-0484
(clarifications of fact and law requested from Complainant).
Further statements
are necessary if Complainant should address points raised in the response
which are crucial to the decision: WIPO/D2000-0193
Panel issued a Procedural
Order requesting additional factual information from Complainant as opposed
to disallowing Complaint for insufficiency of content: Nike, Inc. v. Crystal
International, WIPO/D2002-0352.
Panel requested Complainant
to submit a reply to Respondent’s response: WIPO/D2000-0233, WIPO/D2000-0249
Panel invited both
parties to submit further statements (rebuttal and response thereto): WIPO/D2000-0149, NAF/FA94356, DeC/AF-133.
The Panel invited
both parties to submit statements about interest of Complainant in marks
relied upon in the Complaint: WIPO/D2000-0129.
The Panel ordered
Complainant and Respondent to submit a decision of a French court ruling
on the domain name in issue between the parties and a translation thereof:
WIPO/D2000-0230.
Section 1.7.8.2
– Further Statements Requested by a Party
A Panel may, in its
discretion, grant a Party’s request for further statements.
Comment: A Party who wishes to submit a further
statement should first seek consent from the Panel stating reasons such
as new, pertinent fact that did not arise before submission of the Complaint,
new and relevant legal authority, or egregious factual or legal misstatements
by the other Party.
Some
Panels have refused to allow additional statements absent exceptional circumstances,
where the issues to be raised in the submissions were adequately articulated
in the Complaint and response, or because it would lengthen proceedings
contrary to the Policy goals of rapid and less costly adjudication.
Reporter’s Notes:
Panel granted a Party’s request: WIPO/D2000-0298 (Panel granted Complainant opportunity
to submit reply to Respondent’s alleged misstatements), WIPO/D2000-0030 (leave for second statement granted
to both parties because new issues were raised), DeC/AF-250
(leave granted to submit evidence about Respondent’s new use of domain name).
Panel
accepted Complainant's motion to file a rebuttal and Respondent's motion
to accept Complainant's motion and to file a response to Complainant's rebuttal:
NAF/FA94342, DeC/AF-107, DeC/AF-108.
Respondent sought leave to submit additional information.
The Panel granted Complainant time to reply to these submissions. The Panel
did not accept Respondent’s argument that he should have the right to submit
his statement after Complainant since it was Respondent who requested leave,
and not Complainant: DeC/AF-249.
Panel denied a Party’s
request:
Panel denied Complainant’s
request to submit further statement because Policy and Rules demonstrate
a strong preference for single submissions absent extraordinary circumstances:
WIPO/D2000-0427.
Panel denied request
for further statement and disregarded submission enclosed with Complainant’s
request because points raised therein were sufficiently articulated in Complaint:
WIPO/D2000-0553.
Panel held that only
in exceptional circumstances should additional submissions be requested.
No such circumstances are established if Complainant wishes to reply to
Respondent’s legal arguments and to his allegations about good faith, the
dealings with Complainant’s representative, and the use of the domain name:
WIPO/D2000-0596.
The Panel held that
the issuance of a decision by the same Panel in a related case does not
give parties a right to submit further statements: WIPO/D2000-0662.
Requests of both parties
for further statements denied because the UDRP Rules were held to create
a system of adjudication that resolves disputes as rapidly as possible with
the least amount of cost to both parties. To allow additional submissions
by Complainant would require the allowance of additional rebuttal submissions
from Respondent, generating delays in the decision making process: NAF/FA93547.
Section 1.7.8.3
– Further Statements Considered Without Prior Request from the Panel or
a Party
A Panel
may, in its discretion, consider further statements even though neither
the Panel nor a Party made a prior request for the further statements.
Panel considered unsolicited
further statements:
Panel
accepted rebuttal and invited Respondent to reply: WIPO/D2000-0016,
DeC/AF-369.
Panel
considered reply/rebuttal by Complainant without comment: WIPO/D2000-0067,
NAF/FA94392,
NAF/FA94639, NAF/FA94659,
NAF/FA94960,
NAF/FA94992.
The Panel accepted
and considered supplemental information provided by Complainant: WIPO/D2000-0757
(material came to the attention of Complainant’s counsel only after submission
of Complaint, and Respondent had opportunity to address issues raised by
additional material)
The
Panel considered supplemental response by Respondent without comment: NAF/FA92527.
Panel
considered the parties’ further submissions because they helped to explain
inconsistencies in the Complaint and the response: WIPO/D2000-0730.
Panel
considered Complainant’s reply because it was received before the Panel
began substantive review: NAF/FA94346,
NAF/FA94740,
NAF/FA95035.
Fairness
and equity: Panel cited fairness considerations
and Rule 10(b) as authority for considering unsolicited supplemental material:
WIPO/D2000-0802. Panel considered it equitable to consider further
submissions: WIPO/D2000-0632,
WIPO/D2000-0648.
Reverse
Domain Name Hijacking: Panel accepted further
submissions by both parties accepted because Respondent raised a reverse
domain name hijacking claim in its response: WIPO/D2000-0400,
WIPO/D2000-0428,
WIPO/D2000-0443,
WIPO/D2000-0518.
Both parties submitted
further statements. The Panel only considered Complainant’s reply because
Respondent raised new issues in its response which were not addressed in
Complaint, but declined to consider Respondent’s sur-reply because it either
repeated the response or raised new matter which could have been brought
up in the response: WIPO/D2000-0698.
Panel refused to consider
unsolicited further statements: WIPO/D2000-0038
(Panel found that reply was submitted too late and did not add anything
to the Complaint) , WIPO/D2000-0161,
WIPO/D2000-0322,
WIPO/D2000-0416
(reply did not provide new facts or new legal authority not available when
the Complaint was submitted), WIPO/D2000-0449 (Complainant’s submission
also not considered because it added nothing to the Complaint), WIPO/D2000-0471 (both parties’ submissions
filed after appointment of Panel not presenting new facts), WIPO/D2000-0596,
WIPO/D2000-0659,
WIPO/D2000-0747 (reply excluded for
purposes of equality), NAF/FA94450,
NAF/FA94869 (reply not considered because submitted after review of Complaint
and response and after rendition of decision).
Topic 1.7.9 – Rule 13 – In-Person Hearings
Section 1.7.9.1 – In-Person
Hearings
There shall be
no in-person hearings (including hearings by teleconference, videoconference,
and web conference), unless the Panel determines, in its sole discretion
and as an exceptional matter, that such a hearing is necessary for deciding
the Complaint.
UDRP Rule 13
Reporter’s Notes:
Panel conducted telephonic hearing because Respondent was not
fluent in the language of the procedure: DeC/AF-102.
Topic
1.7.10 – Rule 14 – Default
Section 1.7.10.1 – Effect of Default on Complainant’s
Burden of Proof
Respondent’s default
neither relieves Complainant of the burden of proof nor increases the level
of proof required of the Complainant; rather, Complainant must make a prima
facie showing that, under the Policy, it is entitled to the transfer of
the domain name.
Reporter’s Notes:
Respondent’s default does not relieve
Complainant of the burden of proof: DeC/AF-174, DeC/AF-215, WIPO/D2001-1020.
Respondent’s default
does not call for greater scrutiny of the evidence, nor does it increase
the level of proof to be required from Complainant since a registrant should
not be rewarded for its failure to submit to these proceedings as a Complainant
should not be disadvantaged when the registrant defaults: WIPO/D2000-0586.
Complaint must make
prima facie showing: WIPO/D2000-0476,
WIPO/D2000-0563,
WIPO/D2000-0655,
WIPO/D2000-0665,
WIPO/D2000-0727,
DeC/AF-224, DeC/AF-228, DeC/AF-233, DeC/AF-241, DeC/AF-254.
Panel held that in
the light of Rule 5(e), Complainant's submissions should be regarded as
complete and true unless there is prima facie evidence that they are false
or inaccurate: DeC/AF-176.
Cross-Reference:
UDRP Rule
5(e): If a Respondent does not submit a response, in the absence of
exceptional circumstances, the Panel shall decide the dispute based upon
the Complaint.
Section 1.7.10.2
– Effect of Default on Complainant’s Allegations
Respondent’s default
allows a Panel to draw reasonable inferences of fact from Complainant's
allegations and deem them to be true.
Reporter’s Notes:
WIPO/D2000-0581, WIPO/D2000-0600, WIPO/D2000-0602,
WIPO/D2000-0626, WIPO/D2000-0665,
NAF/FA94971, NAF/FA95283, NAF/FA95294, NAF/FA95310, NAF/FA95312, DeC/AF-143, DeC/AF-145,
DeC/AF-148, DeC/AF-184, DeC/AF-246.
Section 1.7.10.3
– Failure to Respond to All of the Allegations in the Complaint (When
is a Respondent in default?)
While UDRP Rule 5(b)(i)
states that Respondent must respond to statements and allegations contained
in the Complaint and include any and all bases for the Respondent to retain
registration and use of the disputed domain name, a Panel may consider the
Response as a whole in determining whether all the allegations
of the Complaint are contested by the Respondent.
Reporter’s Notes:
Respondent only contested Complainant’s assertions regarding Policy
4(a)(i) and 4(a)(iii), but not Policy 4(a)(ii). From
the nature of the response the Panel, however, the Panel assumed that all
allegations of the Complaint were contested: WIPO/D2000-0038.
Section 1.7.10.4
– Effect of Defaulting on Policy 4(a)(i)
Respondent's failure
to offer sufficient evidence or to participate in the proceeding permits
the inference that Respondent knew that the similarity or identity between
mark and domain name was misleading.
Reporter’s
Notes: NAF/FA94956,
NAF/FA94957,
NAF/FA94958,
NAF/FA94971,
NAF/FA95035
Section 1.7.10.5
– Effect of Defaulting on Policy 4(a)(ii)
Respondent’s failure
to provide sufficient evidence or to participate in the proceeding permits
the inference that Respondent has no rights or legitimate interests.
Reporter’s Notes: WIPO/D2000-0326, WIPO/D2000-0867, WIPO/D2000-0887, NAF/FA94956 (citing WIPO/D2000-0023), NAF/FA95038 (citing WIPO/D2000-0023), NAF/FA95039 (citing WIPO/D2000-0023), NAF/FA95107 NAF/FA95409, DeC/AF-188.
But see:
Panel held in a default
proceeding that Complainant did not prove that Respondent had no rights
or legitimate interests since the record was silent as to what the rights
or interests of Respondent were: NAF/FA94670.
Panel
held that defaulting Respondent had rights in domain name which incorporated
its company name: WIPO/D2000-0303.
Since Complainant
failed to satisfy his burden of pleading and persuasion (it only claimed
that Respondent must have known mark), no such inference was appropriate:
WIPO/D2000-0419.
Section 1.7.10.6
– Effect of Defaulting on Policy 4(a)(iii)
Respondent's
failure to offer sufficient evidence or to participate in the proceeding
permits the inference that Respondent was acting in bad faith.
Reporter’s Notes:
Respondent's failure to offer any evidence
permitted the inference that Respondent was intentionally diverting business
from Complainant: NAF/FA94941,
NAF/FA94942,
NAF/FA94956,
NAF/FA94958,
NAF/FA95035.
Bad faith registration and use of a domain
name consisting of a notorious mark may be presumed due to Respondent’s
default: WIPO/D2000-0305, WIPO/D2000-0306,
WIPO/D2000-0473.
Panel inferred from Respondent’s default that
Respondent acted in bad faith with the intent to extract financial benefits
from misled consumers and Complainant: NAF/FA94739 .
Section 1.7.11.1 - Applicable
Law Under Rule 15(a)
(a) A
Panel shall decide a complaint on the basis of the statements and documents
submitted and in accordance with the Policy, these Rules and any rules and
principles of law that it deems applicable.
UDRP Rule 15(a)
Reporter's Notes:
Rule15(a) applied to allow consideration of US law: WIPO/D2000-0004,
WIPO/D2000-0028.
Rule 15(a) applied
to allow consideration of Spanish law: WIPO/D2000-1402
(decision in Spanish).
Panel denied jurisdiction
to order anything else than cancellation or transfer, even if the law found
applicable in accordance with Rule 15(a)
provides for other remedies: WIPO/D2000-0019.
Rule 15(a) allows
a Panel to find bad faith on grounds other than those contained in Paragraph
4(b): WIPO/D2001-0698.
(e) Panel decisions
and dissenting opinions shall normally comply with the guidelines as to
length set forth in the Provider's Supplemental Rules. Any dissenting opinion
shall accompany the majority decision. If the Panel concludes that the dispute
is not within the scope of Paragraph 4(a)
of the Policy, it shall so state. If after considering the submissions the
Panel finds that the Complaint was brought in bad faith, for example in
an attempt at Reverse Domain Name Hijacking or was brought primarily to
harass the domain-name holder, the Panel shall declare in its decision that
the Complaint was brought in bad faith and constitutes an abuse of the administrative
proceeding.
UDRP Rule 15(e)
Reporter’s Notes: To establish reverse domain name hijacking
Respondent must show knowledge on the part of Complainant of Respondent's
right or legitimate interest in respect of the domain name at issue and
evidence of harassment or similar conduct by Complainant in the face of
such knowledge: WIPO/D2000-0565.
Reverse domain name
hijacking found:
Complainant knew of
Respondent’s legitimate interests and the lack of bad faith, but initiated
the proceeding claiming that Complainant was a cybersquatter and making
further unfounded allegations: WIPO/D2000-0622.
Complainant acted
in bad faith which rose to the level of reverse domain name hijacking by
initiating proceedings after unsuccessful attempts to encourage Respondent
to sell the domain name for almost one year and before it had even submitted
the relevant trademark application and by misrepresenting the status of
its application in the cease-and-desist letter and in the Complaint and
alleged the mark to be registered: DeC/AF-169.
Reverse domain name hijacking found: WIPO/D2000-0993.
Reverse domain name
hijacking not found:
No reverse domain name hijacking found because
Complainant had substantial business interests in domain name: WIPO/D2000-0105.
No reverse domain name hijacking because the
mere filing of a Complaint is not proof of bad faith.
Otherwise every unsuccessful domain name Complaint would be subject
to a finding of abuse of administrative process: DeC/AF-152.
No reverse domain name hijacking because Complainant
had not acted in bad faith when it initiated the proceeding based on a federally
registered mark which, in the meantime, had become a generic term: WIPO/D2000-0358.
No reverse domain name
hijacking because the offer by Respondent to transfer domain name for some
nominal consideration and the subsequent offer to transfer it without receiving
any consideration is not evidence that Complainant acted in bad faith and
with an intent to harass: WIPO/D2000-0009.
Topic 1.7.12 – Rule 16 – Communication of Decision to Parties
Section 1.7.12.1 - Communication of Decision to Parties
(a) Within three (3) calendar days after
receiving the decision from the Panel, the Provider shall communicate the
full text of the decision to each Party, the concerned Registrar(s), and
ICANN. The concerned Registrar(s) shall immediately communicate to each
Party, the Provider, and ICANN the date for the implementation of the decision
in accordance with the Policy.
(b) Except if the
Panel determines otherwise (see Paragraph 4(j) of the Policy),
the Provider shall publish the full decision and the date of its implementation
on a publicly accessible web site. In any event, the portion of any decision
determining a Complaint to have been brought in bad faith (see Paragraph 15(e) of these Rules)
shall be published.
UDRP Rule 16
Reporter’s Notes: Respondent's request to treat response confidential
denied because no exceptional circumstances were claimed: WIPO/D2000-0071.
Section 1.7.13.1 – Settlement
(a)
If, before the Panel's decision, the Parties agree on a settlement,
the Panel shall terminate the administrative proceeding.
UDRP Rule 17(a)
Reporter’s
Notes: Settlement: Panel ordered the
registrar to transfer the domain name: WIPO/D2000-0058, WIPO/D2000-0081. Both parties
requested transfer of domain names to Complainant: WIPO/D2000-0601.
Settlement not found: Respondent offered the relief sought
by Complainant, but Complainant had not agreed to it. Panel held Complainant
entitled to a decision since offer was only made after commencement of proceeding:
WIPO/D2000-0009.
Suspension of proceeding
ordered to allow the parties time to find settlement: WIPO/D2000-0081.
Section 1.7.13.2
- Termination
(b) If, before the
Panel's decision is made, it becomes unnecessary or impossible to continue
the administrative proceeding for any reason, the Panel shall terminate
the administrative proceeding, unless a Party raises justifiable grounds
for objection within a period of time to be determined by the Panel.
UDRP Rule 17(b)
Reporter’s Notes: Panel terminated
proceedings when confronted with difficult issues of ownership of the relevant
mark, issues already the subject of a TTAB proceeding initiated prior to
this proceeding. Since the TTAB was considered
to be in a better position to resolve the ownership dispute, the Panel decided
that it was inappropriate and potentially unfair to proceed to a decision
on the summary record here while a dispute over a necessary element of Complainant’s
case is pending before a tribunal in a superior position to address the
issue: WIPO/D2000-0298.
No reason to terminate
the proceeding when Respondent tried to transfer the domain name unilaterally
to Complainant which, during pendency of procedure, is not possible under
Policy 8(a): WIPO/D2000-0009
Respondent consented
to the requested relief, but the parties did not agree to a formal settlement.
Panel held that terminating the proceeding would not effect the parties'
intent and decided to enter an order granting the relief requested by Complainant
so that the transfer could occur without further delay: WIPO/D2000-0207
Panel refused to terminate
where the commencement of legal proceedings was considered a delaying tactic:
WIPO/DRO2001-0001.
Topic 1.7.14 – Rule 18 – Effect of Court Proceedings
Section 1.7.14.1 – Effect of Court Proceedings
(a) In the event
of any legal proceedings initiated prior to or during an administrative
proceeding in respect of a domain-name dispute that is the subject of the
Complaint, the Panel shall have the discretion to decide whether to suspend
or terminate the administrative proceeding, or to proceed to a decision.
(b) In the event that
a Party initiates any legal proceedings during the pendency of an administrative
proceeding in respect of a domain-name dispute that is the subject of the
Complaint, it shall promptly notify the Panel and the Provider.
UDRP Rule 18
Reporter’s Notes:
Proceeding was suspended to see if Name Change Agreement
submitted to registrar by Respondent would be accepted: WIPO/D2000-0052.
Stay granted because parties engaged in settlement
discussions (proceedings later recommenced): NAF/FA94953.
Panel terminated proceedings
when confronted with difficult issues of ownership of the relevant mark,
issues already the subject of a TTAB proceeding initiated prior to this
proceeding. Since the TTAB was considered to
be in a better position to resolve the ownership dispute, the Panel decided
that it was inappropriate and potentially unfair to proceed to a decision
on the summary record here while a dispute over a necessary element of Complainant’s
case is pending before a tribunal in a superior position to address the
issue: WIPO/D2000-0298.
Panel
ordered suspension of the proceeding because a court ordered Respondent
not to transfer the domain name until further court order, a transfer being
the remedy Complainant was seeking: DeC/AF-278.
Panel refused to terminate
where the commencement of legal proceedings was considered a delaying tactic:
WIPO/DRO2001-0001.
CHAPTER 1.8 – SUPPLEMENTAL RULES
Topic 1.8.1 – Effect of Supplemental Rules
In addition to the
UDRP Rules, Parties should pay careful attention to the Supplemental Rules
of the selected Provider since the Supplemental Rules may affect the course
of the proceeding or even the outcome of the dispute.
Reporter’s Notes:
Complainant’s additional submissions refused because they did
not comply with NAF Supplemental Rule 7: NAF/FA95013.
Center
issued a notice of deficiency because the Complainant had not complied with
the WIPO's Supplemental Rule 3(c); Complainant subsequently
remedied that deficiency: WIPO/
D2000-0783.
Panel, citing Paragraph
8 of the NAF Supplemental Rules, rejected Respondent’s invitation to visit
Respondent’s site as improper and decided the issues on the basis of the
record: NAF/FA94964.
Panel
criticized Respondent for vastly exceeding the word limit under Rule 10
and recommended that, in the future, WIPO enforce the rule strictly by refusing
to accept a blatantly excessive response and provide the Respondent with
a short time to reformulate its response within the limit, but reviewed
the material nonetheless: WIPO/
D2000-0898.
Cross References:
The supplemental rules may be found at: World Intellectual
Property Organization, National Arbitration
Forum, eResolution
Consortium, and CPR Institute.
Chapter 1.9 – REMEDIES
Topic
1.9.1 – Remedies
The remedies available
to a Complainant pursuant to any proceeding before an Administrative Panel
shall be limited to requiring the cancellation of your domain name or the
transfer of your domain name registration to the Complainant.
UDRP Policy
Paragraph 4(i)
Comment:
Transfer is, by far, the most common remedy.
Reporter’s Notes: Remedies were held to be at the discretion
of the Panel. A cancellation allows any person to register again the domain
name and a transfer allows other interested person to initiate procedure.
In the instance a transfer was ordered based on a first-come first served
basis referred to in WIPO/D2000-0044:
WIPO/D2000-0034.
Panel denied jurisdiction
to order anything else than cancellation or transfer, even if law found
applicable in accordance with Rule 15(a)
provides for other remedies: WIPO/D2000-0019.
Complainant requested
that the Panel compel Respondent to produce a full list of the registered
domain names that incorporate and/or misspell Complainant’s mark. The Panel
raised doubts as to whether it had the authority to grant such relief, and
declined it because Complainant could obtain such information easily: WIPO/D2000-0273, see also WIPO/D2000-0777.
Panel
declined Respondent’s suggestion that all costs occurred should be borne
by complainant as being outside of Policy 4(i):
WIPO/D2000-0443.
Panel
declined jurisdiction to allow a domain name holder to continue using the
domain name only so long as specified under certain conditions: DeC/AF-96.
But
see:
Panel
ordered that Respondent cease and desist from any and all use of the disputed
domain names: NAF/FA94363,
NAF/FA94397,
NAF/FA94448,
NAF/FA94641,
NAF/FA94725,
NAF/FA94802.
Cross-Reference:
Rule
15(a)
