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Rule 12 and the Panel’s Inquisitional Role in Eliciting Further Statements

The UDRP is essentially an adversary proceeding. Panels have pointed out in response to parties requesting them to inquire and obtain proof that a “party is under a duty to produce evidence in support of its case. It is not for the Panel to undertake an inquisitional role,” Randgold Resources Limited and Randgold & Exploration Co. Ltd. v. Pico Capital Corp., D2001-1108 (WIPO October 24, 2001) (addressing the Respondent); Pleasure Cake SL v. TechTools, D2009-0580 (WIPO July 14, 2009) (addressing the Complainant). Yet, the inquisitional role is not entirely missing from the UDRP. A Panel “may request, in its sole discretion, further statements or documents from either of the Parties.” Rule 12 of the Rules of the Policy reads: “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.”

“Request[ing] further statements or documents” is central to the decision in Comité Interprofessionnel du vin de Champagne v. Steven Vickers, DCO2011-0026 (WIPO June 21, 2011) involving <champagne.co>. The Complainant represents producers of champagne. It is not itself the source of goods. It nevertheless asserts that in its representative capacity it has actionable rights under U.K. “The Complainant does not contend that it holds any registered trademark or service mark (including any certification mark or collective mark). It relies purely on rights which it says it holds under the English law of passing off.” The Panel posed the following question (see my Note of July 1): “Are Rights in a Protected Designation of Origin or a Geographical Identifier Sufficient as such for the Complainant to make out a Case of ‘Rights’ under Paragraph 4(a)(i) of the Policy?”

To better understand the Complainant’s position in Comité Interprofessionnel du vin de Champagne the Panel issued a Procedural Order requesting that it explain its legal position. Instead of responding the Complainant requested that it be allowed to withdraw its Complainant “at this stage.” Rule 17 of the UDRP Rules provides for suspending or terminating a proceeding, but not for withdrawing a complaint. Rule 17 reads:

(a) If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.

(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.

The Panel noted that 17(a) did not apply since the parties did not agree to settlement. Rule 17(b) is tied to Rule 4(k) – a “mandatory administrative proceeding … shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced.” “Clearly it was not ‘impossible’ for the Panel to continue this proceeding, so the issues were whether it was ‘unnecessary’ for the Panel to do so, and whether the Respondent had raised any justifiable objection to the termination.” The Panel explained that in the particular circumstances of this case

the Panel was not persuaded that the Complainant’s unexplained request to withdraw its Complaint “at this stage” rendered it unnecessary for the proceeding to continue. First, it was not made clear what the Complainant meant when it said that it wished to withdraw the Complaint “at this stage”. Did that mean that the Complainant was reserving the right to refile the Complaint, perhaps with extensive additional evidence, or possibly merely in the hope that a different panel would be appointed? In the Panel’s view, it would not be fair to the Respondent, which had been put to the expense and trouble of filing a substantial response, if it were obliged to go through that process again. The position might have been different if the Complainant had sought to withdraw the Complaint at an early stage after filing, but in this case the Respondent had put in a significant amount of work responding to the Complaint. In the Panel’s view, that factor pointed strongly in favor of allowing the proceeding to continue. In the Panel’s view, it also provided a “justifiable objection” by the Respondent to the termination of the proceeding on the Complainant’s request.

A further consideration for rejecting the Complainant’s request in Comité Interprofessionnel du vin de Champagne concerned the issue of forum shopping. There is little law on this issue. The concern is that by “allowing the Complainant to withdraw the Complaint at such a late stage could open the door to what might be loosely described as ‘forum shopping’.” Withdrawing a complaint “at this stage” opens up the possibility that the complainant contemplates refiling and trying its luck with another Panel.

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