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Supplementing the Record in UDRP Proceedings; When Acceptable?

The UDRP limits parties’ submissions to complaints and responses; accepting “further statements or documents” is discretionary with the Panel (Rule 12, Procedural Orders), although the Forum (in Supplemental Rule 7) but not WIPO provides for supplementing the record with the proviso that “[a]dditional submissions must not amend the Complaint or Response.” For some panelists, Rule 7 contradicts the Policy. A possible explanation for introducing the supplementary submission rule into the arbitral process was to conform with litigation practice in the U.S. since UDRP complaints perform a dual function in both stating a claim and moving for relief; so that while additional submissions are generally discouraged an argument can be made for them on the ground that UDRP complaints are essentially motions for summary judgment.

In any event, the  temptation for last words is often irresistible but in this forum the general rule is that parties are expected to get their contentions and proofs right in their initial submissions. Rule 7 properly used allows parties to sum up their adversaries’ deficiencies; used improperly additional submissions contribute nothing new to the argument and have led to puzzling awards. This explains the tension in Rule 7 and the split that occasionally rises to the surface.

One of the veteran panelists for both WIPO and the Forum has long questioned Rule 7. In YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, FA160500 1675141 (Forum July 11, 2016) (<yetihandles.com>) he explains that whether to request additional submissions under Rule 12 or accept Rule 7 submissions is left to the discretion of the Panel. Paying the Rule 7 fee does not guarantee that panelists will (or should) accept additional submissions. In Yeti Coolers, “Complainant’s Additional Submission did not address any new legal principles or facts that could not have been anticipated in the Complaint [and for this reason the] Panel disregards the Complainant’s Additional Submission.”

The key to preparing a UDRP complaint is “anticipating” respondents’ counter-narrative and defenses, which can understandably be challenging when doppelgangers may present themselves with having completely different associations than the mark as conveyed to consumers. In Yeti Coolers the parties were engaged in a genuine dispute over a nominative fair use defense.

Panels should only invoke Rule 12 requests for clarification, Wild PCS, Inc. and Tom Yang v. Perfect Privacy, LLC / Choi Lam, D2016-0017 (WIPO February 17, 2016) (<wildpcs.com>), not to assist a party, VideoLink, Inc. v. Xantech Corporation. FA1503001608735 (Forum May 12, 2015) (“At the request of the Panel pursuant to Rule 12, Complainant provided an Additional Submission contending that the UDRP analysis should occur not when Respondent originally registered the domain name but when Respondent renewed the domain name in June 2010.”)

VideoLink excepted (renewal of registration is not grounds for forfeiture under the UDRP), WIPO panelists generally favor the more cautious approach to additional submissions (requested or unsolicited). The view expressed in Yeti Coolers has a long history. A veteran panelist speaking at the end of UDRP’s first full year stated in Viacom International Inc. and MTV Networks Europe v. Rattan Singh Mahon, D2000-1440 (WIPO December 22, 2000) that

it would, and should, be in exceptional cases only that supplementary submissions are requested by a Panel. If requesting supplementary submissions were to become unexceptional, the dispute resolution procedure under the Uniform Policy and Rules would most likely become significantly more resource-consuming to all the actors (i.e. the parties, the dispute resolution service provider, and the Administrative Panel) than is currently the case, as the unfolding scenario in this case demonstrates. Such an outcome seems contrary to the clear intention of ICANN in adopting the Uniform Policy and the Uniform Rules in their present form.

Where the Panel in Viacom International found Complainant’s request to supplement its complaint “exceptional” and accepted (specifically requested by the parties, not unsolicited), the Panel in Yeti Coolers used the principle to reject Complainant’s submission.

Forum panelists generally accept Rule 7 submissions without question even if they don’t materially advance a party’s position. They are certainly considered where facts emerge in the response (history of use for example) that complainants could not possibly have known about and have to address cold.

The Panel in Data RX Management, Inc. v. Network Services / MindViews Limited Liability Company, FA1608001687126 (Forum September 16, 2016) (<datarx.com>) accepted the additional submission without question even though it clearly advanced no “new legal principles or facts”; rather, it found the domain name “so generic that it is conceivable that the Respondent fell upon the disputed domain name without knowledge of the common law rights of the Complainant.”

Data RX is interesting as an illustration of Complainant’s “anticipation” failure; it “submitted no evidence … that adequately [addresses] any of [its] claims.  Therefore, there is no evidence that Respondent registered the domain with knowledge of Complainant 13 years ago or that it intended to exploit the purported value of Complainant’s mark. Where complainants have failed to support their case with sufficient evidence, panels have found for respondents.”

Failing to support one’s case applies equally to respondents failing to present sufficient evidence of rights or legitimate interests or rebut bad faith.  Well-known trademarks composed of common words, for example, may appear vulnerable (and could be under the right narrative and proof) but nevertheless protected against opportunistic appropriation. It is not sufficient to argue that the dominant element in a domain name is a common word where the second level domain suggests a relationship with the trademark owner.

In Enterprise Holdings, Inc. v. David Morris, FA1607001685615 (Forum September 8, 2016) (<enterpriservrental.com>) Respondent argued that “the only thing the Complainant has in common with the domain name <enterpriservrental.com> is the word ‘enterprise.’” In its additional submission Complainant pointed out that Respondent was using the wrong test. The domain name is confusingly similar because it suggests a relationship between Respondent (in the vehicle rental business) and mark owner (in the car rental business).

Complainant’s principal argument in Enterprise Holdings was embedded in its complaint, namely that “Respondent’s resolving website displays a ‘Brandon RV Rental’ header” so “why [did] Respondent register[ ] the disputed domain if Respondent is known as and operates as Brandon RV Rental [?]” Respondent’s counter-narrative that it “has a legitimate interest in changing its name eventually to erase local geographic biases against the word ‘Brandon’ in its name” may in fact be true but that’s not the “legitimate interest” a respondent has to prove.

While complainants cannot monopolize common words they can prevent others from capitalizing on the goodwill  complainants have established in their marks where the manifest purpose is attracting traffic to respondents’ own websites for commercial gain as described in paragraph 4(b)(iv) of the Policy.

The Panel in Innovative Marketing and Distribution, Inc d/b/a Engel Coolers v. Michael Harrington, FA1606001678152 (Forum July 5, 2016) also accepted Complainant’s additional submission without questioning whether it added new facts. Respondent was a contract distributor of Complainant’s product: “For its part, Respondent argues that Complainant`s statement about the revocation proves that at least until April 4, 2016 Respondent`s registration and use of the disputed domain name was not in bad faith.” This puts the dispute outside of the jurisdiction of the Policy, and the Panel properly dismissed the complaint as not arbitral under the UDRP.

Two kinds of disputes arise with distribution agreements, namely they either provide for a divorce contingency and specifically address the issue of domain names; or they fail to specify post termination rights to domain names lawfully registered to perform services under the agreement. Apparently, the distribution agreement in Innovative Marketing was unclear about the “effects of Complainant’s revocation.” Unless prenuptial agreements are clearly written they raise questions of fact.

The contrast between panelists assessing complaints filed with WIPO and the Forum is illustrated in ROAR, LLC v. Jonathan Shalit, ROAR Global Limited, D2016-1574 (WIPO October 4, 2016)  (<roarglobal.com>). In this case, the Panel found the request not exceptional and rejected the additional submission:

Complainant had multiple opportunities to file evidence to support its allegations, having filed two amended versions of the Complaint (i.e., three versions in total). As the Complainant chose not to do so despite several opportunities, the Panel has decided not to exercise the Panel’s power to request further evidence from the Complainant.

And concluded that

It is the Complainant’s responsibility to present a complete case to the Panel, and it made the decision to rely on bare allegations with no evidentiary backing.

Roar, LLC incidentally was represented by experienced counsel; a good, although negative example, of not getting it right.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement and Update here.  Supplement and Update through August 2016 will be available in e-book format on October 1, 2016; the print format will be published on October 15, 2016. The Supplement and Update will also be available in pdf format from the publisher’s website. See forthcoming announcement.

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