Rules 12 and 10(a) of the Rules of the Policy are closely connected. Rule 12 grants panelists authority to request information from parties, while Rule 10(a) of the Rules of the Policy has been construed to authorize panelists to undertake some minimal research – “The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules” – but this does not (or should not) extend to filling in facts not pleaded by or making a case for a party. An early decision explained that Panels may “independently visit the Internet in order to obtain additional light” on a case, InfoSpace.com, Inc. v. Hari Prakash, D2000-0076 (WIPO April 6, 2000) and perform “limited modest factual research.” This “consensus” is reflecting in Paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP Questions which reads:

A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.

However, it “is one thing for a panelist to view a web site to verify parties’ assertions and quite another to embark upon an independent investigation as to what a complainant’s case may be,” Silvie Tomcalová a.k.a. Sylvia Saint v. Juan Campos, D2006-0379 (WIPO May 5, 2006). Beyond the limited research permitted, panelists are not permitted to make a party’s case any more than a judge in a civil action is authorized to grant relief not otherwise requested. This issue of the Panel’s authority to independently investigate facts is noted in a concurrent opinion in a case discussed last week, San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., D2009-1545 (WIPO March 3, 2010) and deserves not to be overlooked.

“Limited factual information” should be of the kind bearing a relationship with judicial notice, that is facts of common knowledge “not subject to reasonable dispute because they are capable of accurate and ready determination or resort to sources whose accuracy cannot reasonably be questioned,” Uniform Rules of Evidence, Rule 201. The majority in San Diego held that the disputed domain name was confusingly similar to the complainant’s trademark, while the concurring opinion disagreed:

As the majority correctly notes, neither of the contested domain names incorporates Complainant’s mark in its entirety. Indeed, each of the contested domain names is substantially shorter than Complainant’s mark, and composed entirely of elements that are either geographically descriptive (“sandiego” and “sd”) or a stub (“hydro”) of the very part of its mark that Complainant expressly disclaimed in its registration application. The complete elimination of the term “organics” from both contested domain names, coupled with the substitution of the very common prefix “hydro” for the word “hydroponics” are sufficient in my view to render both domain names not confusingly similar to the mark in which Complainant has established rights.

However, the majority in San Diego based its decision on a visit to the Complainant’s website. The question is whether it is appropriate for the Panel to conduct an independent investigation in cases in which there is no default and the parties have submitted a record. In that case where “a party has expressly elected to argue A before a panel, that panel should not presume it also intended to argue B. The majority simply cannot know whether Complainant failed to direct the Panel’s attention to its own website out of simple forgetfulness, or instead because it was aware of some grounds for doubting that the site demonstrates the rights it seeks to establish.”

The decision in San Diego in any event favored the Respondent, but the independent investigation assisted the Complainant by filling in information not in the record that supported the conclusion that the domain name was infringing. An alternative view is that the parties’ websites historically and presently are deemed part of the record, either to corroborate or contradict their assertions. This better explains and justifies research in the Internet Archive [see Note for March 17th].

Gerald M. Levine <udrpcommentaries.com>