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.
