Panels are sworn to neutrality, but there has developed under the UDRP space for them to perform independent research “if it deems this necessary to reach the right decision” (WIPO Overview 2.0, paragraph 4.5). It ranges from the minimal such as examining official trademark databases and reviewing past history of domain names on IA’s Wayback Machine to the quite extensive as can be seen on a list prepared by the three-member Panel in Sensis Pty Ltd, Telstra Corporation Limited v. Yellow Pages Marketing B.V., D2011-0057 (WIPO March 15, 2011). When an arbitrator has the power to perform independent research that goes beyond verification of a particular fact it becomes more than a trier of fact and interpreter of law, which raises neutrality issues.
The Sensis list includes research of “other websites and social media pages operated by the parties or their associates, as well as advertising, press releases, and other public statements by the parties, especially where these tend either to corroborate or impeach the parties’ statements in a UDRP proceeding, reveal an admission against interest, or furnish information about an absent respondent.” I’m italicizing the “especially where” clause to emphasize just how extensive the independent research can be and the justification for it, namely to “reveal an admission against interest . . . where these tend either to corroborate or impeach the parties’ statements.” In proceedings in common law courts judges don’t perform that kind of factual research; they are not prosecutors.
So the WIPO Overview drafters built in (actually, abstracted from decided cases) a safeguard, a best practice to accompany independent research: “If a panel intends to rely on information from these or other sources outside the pleadings, especially where such information is not regarded as obvious, it will normally consider issuing a procedural order to the parties to give them an opportunity to comment.” Absent this procedure the party prejudiced by the introduction of extrinsic facts is placed at a disadvantage, which is corrected by authorizing the Panel to request “further statements” including documents from either of the parties.
An interesting illustration of the consequences of using extrinsic evidence without the safeguard is Jones Apparel Group Inc v. Jones Apparel Group.com, D2001-1041 (WIPO October 16, 2001). In this case a later Panel “accepted a refiled complaint where the earlier panelist found the respondent’s conduct abusive but also found inadequate evidence of the complainant’s trademark rights, and yet did not exercise its discretion under paragraph 12 of the Rules to request further evidence of trademark rights in that proceeding.” This statement is a warning which I think is generally appreciated that using extrinsic evidence as the basis for its award without affording a party an opportunity to provide the missing evidence is not a “right” but a “wrong decision.”
Ordinarily, however, the extrinsic evidence is modest, or “limited” as it’s generally phrased. The Panel in Braccialini S.P.A. v. Artem Mochalov / Identity Protection Service, Identity Protect Limited, D2016-0083 (WIPO March 10, 2016) noted that “[i]n keeping with the consensus view among UDRP panels that a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision, the Panel verified the on line official trademark databases of the appropriate trademark registries to ascertain that both trademarks have been renewed and are active, and is satisfied that they are.” Here, the Panel emphasizes “limited factual research into matter of public record,” which is definitely tame when compared to the “especially where” clause quoted above from the Sensis case.
While the procedure for undertaking independent research is not controversial it does raise questions about neutrality in that the outcome of the Panel’s research can be determinative even though not part of the parties’ record. Best practice for commercial arbitrators (even assuming they are authorized to do factual or legal research) would give the opposing party an opportunity to respond; and that is true too in the UDRP context as we’ve already seen with Jones Apparel. A fine example of a Panel’s practice when its independent research contradicts a party’s statements is seen in Wild PCS, Inc. and Tom Yang v. Perfect Privacy, LLC / Choi Lam, D2016-0017 (WIPO February 17, 2016); and also (same Panel) Singapore Pools (Private) Limited v. Vietnam Domain Privacy Services / To Thi Thanh Tam, D2016-0292 (WIPO March 26, 2016). I say “fine” because it’s a commendable example of how the practice should be.
In both cases the independent research favored Complainant using a tool capable of identifying past domain name holders and dates of holding. I’ll come back to Wild PCS and the tool in a moment. In Singapore Pools the Respondent stated that “[t]his larger company is picking on me. . . . I have owned this domain name since 2004. That’s 12 years. Now, 12 years later, they think SG Pools has something to do with their company? I have never been in contact with them, I’ve never heard of them, and now they simply want to hijack my domain name.” Falsely certifying to facts is not a winning strategy for either party but what if the adversary doesn’t have the tools to show falsity? Is it the Panel’s role to look beyond the certification?
As it happens the Panel verified the falsity of Respondent’s statements in Singapore Pools and the veracity of Complainant’s statements in Wild PCS by using an online tool created by DomainTools.com—not listed incidentally in Sensis—that provided him with significantly more information about the parties than could possibly be found by a simple Internet search. In both cases the Panel disclosed what he had unearthed: “The Panel has visited the DomainTools.com database, which indicates that . . . .” In the case of Singapore Pools “from at least August 15, 2005 to at least November 20, 2009 the Domain Name was held in the name of Navigation Catalyst Systems Inc. of California. Thereafter, according to that database, it passed into the name of a privacy service in Arizona and did not enter into the name of the Respondent’s Vietnamese Privacy Service until the end of 2011 or beginning of 2012.’”
However, the concern about performing independent research is that it may give the appearance of favoring one party over the other by discovering evidence that a party missed; why should the Panel assist a party who fails to fully marshal its evidence? Thus, in Wild PCS, “[t]he Complainants have produced very little in the way of evidence to support the existence of service mark rights. There is no service mark registration and the Complainants have produced little in the way of evidence as to the extent of their business under the claimed mark. But,
in the course of the Panel’s DomainsTools.com searches . . . the Panel viewed screenshots of the website connected to the Domain Name dating from 2008 when the Domain Name was used by Wild PCS Inc.’s predecessor, Wild PCS Accessories, to the present day when the website relates to the business of Wild PCS Inc. as it has done since 2010. The Panel is satisfied that the name “Wild PCS” has been in continuous use in trade for the last eight years by Wild PCS Inc. and its predecessor.
In fact, the independent research in Wild PCS was the turning point for the Respondent:
The Panel infers from the failure of the Respondent to respond substantively to the Panel’s Procedural Order No. 1 that the Panel’s findings from the DomainTools.com enquiries . . . are accurate and that the Respondent did not, as he claimed, acquire the Domain Name in the open market and independently of the previous owner.
The Panel infers that the Respondent acquired the Domain Name from Dingyo Tang, who had control of the Domain Name prior to its transfer to the Respondent, in order to assist Dingyo Tang in his endeavor to put the Domain Name beyond the reach of the Complainants and not for any good faith reason associated with any right or legitimate interest in respect of the Domain Name.
To avoid any breach of neutrality the Panel clearly explained its practice. It issued a Rule 12 Procedural Order that specifically requested the Respondent to explain (actually rebut if it could) the independent research:
Self evidently, on that basis, the Respondent has no rights or legitimate interests in respect of the Domain Name. . . . The Panel believes that the inference is well-founded. Were it otherwise the Respondent had ample opportunity to explain himself by responding substantively to the Procedural Order No. 1, an opportunity that he elected not to grasp.
It would not be an unreasonable question to ask whether the Wild PCS Complainant would have prevailed but for the Panel’s research particularly in view of the comment that the Complainant “produced very little by way of evidence.” Did it succeed only because the Panel satisfied itself “from the evidence in the case file, on the balance of probabilities, that that use has been sufficient to give rise to unregistered service mark rights in respect of the mark for purposes of the Policy”? Would another Panel has performed the independent research? In Robin Food B.V. v. Bogdan Mykhaylets, D2016-0264 (WIPO April 1, 2016), for example, the Panel performed no independent research:
Although there is an assertion in the Complaint that the Domain Name was registered in bad faith, there is little more than that so far as bad faith registration is concerned. There is no real attempt to explain why it is more likely than not when the Domain Name was acquired that the Respondent knew of the Complainant’s use of that term in business and that it was with an intent to take unfair advantage of that use that the Domain Name was so acquired.
Would Robin Food have done better if it had performed more research? Or, better, if the Panel had helped it by doing the research it had failed to do?
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 here.