Last updated: January 2002
Megan Kirk (University of
Washington School of Law ’02)
Amy Bender (Harvard Law School ’03)
This work is licensed under a Creative Commons License.
CHAPTER 1.1 - APPLICABLE DISPUTES AND MODIFICATIONS OF THE POLICY
Topic 1.1.1 – Applicable Disputes (What disputes are covered by the UDRP?)
Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third Party (a "Complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each of these three elements are present.
UDRP Policy Paragraph 4(a)
Domain registrants in specific TLDs are bound to submit to UDRP procedures by virtue of the terms of the domain name registration agreement.
A complainant must have a trademark or service mark to bring a UDRP action. Domain name holders cannot initiate a UDRP action against a trademark owner.
Topic 1.1.2 - Applicable Top Level Domains (Which domains are governed by the UDRP?)
This policy has been adopted by all accredited domain-name registrars for domain names ending in .com, .net, and .org. It has also been adopted by certain managers of country-code top-level domains (e.g., .nu, .tv, .ws), and will eventually apply to certain new gTLDs (e.g., .biz, .info).
UDRP Policy Introduction
Reporter’s Notes: Not all TLDs use the UDRP. A current list of gTLDs that utilize the UDRP is available from WIPO. WIPO also provides a list of new gTLDs that will be subject to the UDRP, as well as a list of .
Topic 1.1.3 – Modifications of the Policy (What happens when the Policy changes?)
We reserve the right to modify this Policy at any time with the permission of ICANN. We will post our revised Policy at <URL of Registrar's Policy> at least thirty (30) calendar days before it becomes effective. Unless this Policy has already been invoked by the submission of a Complaint to a Provider, in which event the version of the Policy in effect at the time it was invoked will apply to you until the dispute is over, all such changes will be binding upon you with respect to any domain name registration dispute, whether the dispute arose before, on or after the effective date of our change. In the event that you object to a change in this Policy, your sole remedy is to cancel your domain name registration with us, provided that you will not be entitled to a refund of any fees you paid to us. The revised Policy will apply to you until you cancel your domain name registration.
UDRP Policy Paragraph 9
Reporter's Notes: The UDRP can be changed at any time and the domain holder must abide by the changes. Such modifications to the Policy must be approved by the ICANN Board of Directors with input from the Domain Names Supporting Organization. ICANN Bylaws Article VI Section 2 and Article VI-B. To follow Policy decision-making, visit the ICANN site and/or subscribe to its Announcements list and the DNSO site and it’s Mailing Lists.
Topic 1.1.4 – Timing
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 22.214.171.124 – 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 126.96.36.199 – 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 188.8.131.52 – 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
Mere filing of a Complaint cannot be proof of bad faith: DeC/AF-152
Topic 1.3.2 – Burden Shifting
Section 184.108.40.206 – 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”: 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.; followed by .
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 , 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.
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.
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:
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.
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.
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.
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.
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 220.127.116.11 – 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 18.104.22.168 – 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 22.214.171.124 – 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 126.96.36.199 – 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 WIPO/D2000-0591.the Complainant or delay the proceeding:
Response was filed after the deadline but where Respondent alleged a medical emergency:
Response filed after the deadline was considered in order to avoid a miscarriage of justice:
Response was handwritten: NAF/FA93634.
Response did not comply with word limit: WIPO/D2000-0376.
Response was faxed: NAF/FA94425.
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.
Section 188.8.131.52 – 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 184.108.40.206 – 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 220.127.116.11 – 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.
Section 18.104.22.168 – 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.
Cross-Reference: Rule 8.
Topic 1.7.5 – Rule 8 – Communications Between Parties and the Panel
Section 22.214.171.124 – 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 126.96.36.199 – Evidence Admitted by Panels
under Rule 10(d)
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
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 188.8.131.52 – 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 184.108.40.206 below.
Section 220.127.116.11 – “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.
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 18.104.22.168 – 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 22.214.171.124 – 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:
Panel applied Spanish as the language of the proceeding after Complaint was submitted in Spanish, and because both parties were from Spain:
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:
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.
The rule of this section derives from WIPO/D2000-1759.
Topic 1.7.8 – Rule 12 – Further Statements
Section 126.96.36.199 – 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 188.8.131.52 – 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 184.108.40.206 – 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 220.127.116.11 – 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 18.104.22.168 – 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 22.214.171.124 – 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 126.96.36.199 – 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 188.8.131.52 – 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 184.108.40.206 – 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.
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 220.127.116.11 – 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 .
(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.
Rule 15(a) applied to allow consideration of Spanish law: WIPO/D2000-1402 (decision in Spanish).
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.
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 18.104.22.168 - 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
Respondent's request to treat response confidential denied because no exceptional circumstances were claimed: WIPO/D2000-0071.
Section 22.214.171.124 – 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 126.96.36.199 - 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 188.8.131.52 – 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.
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.
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)
Please send all inquiries to: Diane Cabell
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