Home / Blogs

The Truth About Supplemental Filings in UDRP Cases

Doug Isenberg

A typical proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) consists of a complaint and, sometimes, a response. UDRP Rule 12 makes clear that "further statements or documents from either of the Parties" are appropriate only if "the Panel… request[s], in its sole discretion."

In practice, however, such supplemental or additional filings are not uncommon, with the leading UDRP service providers — WIPO and the Forum — issuing guidance about when they may be appropriate.

While WIPO's Supplemental Rules don't explicitly address additional filings, the WIPO "Overview" says:

Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.

The Forum's Supplemental Rules actually address the issue — in a manner that differs from that described in the WIPO Overview. In particular, the Forum says that "additional written statements and documents" may be submitted within specified time periods, provided that they "must not amend the Complaint or Response" and further provided that, in the case of a submission from the complainant, payment of "an additional submission fee of $400."

Thus, the key differences between WIPO and the Forum on the issue of supplemental filings has often been summarized as: A WIPO panel may accept a supplemental filing, which does not require payment of an additional fee, if it is relevant and pertains to information that was not previously available; while the Forum gives parties the right to submit a supplemental filing but requires a $400 fee from the complainant.

However, as in many areas of domain name disputes, the issue is more complicated than it might at first appear.

While it may seem obvious that is unclear whether a WIPO panel will consider an additional filing in a UDRP dispute, the opposite is not true: That is, despite the Forum's Supplemental Rules, not every Forum panel will consider an additional filing — even if the party submitting it pays the $400 fee.

Indeed, a recent UDRP decision at the Forum addresses this very issue. In YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, NAF Claim No.1675141, the panel wrote that it would "disregard the Complainant's Additional Submission" because it "was nothing more than a standard 'reply' to the Response" that "did not address any new legal principles or facts that could not have been anticipated in the Complaint" and "did not include any new facts or arguments that did not exist at the time of the Complaint or could not have been anticipated."

In other words, although the complainant presumably paid a fee to submit its additional filing, the panel refused to consider it.

How is that possible?

The Forum's Supplemental Rules must be read closely: They give a complainant the right to "submit" an additional filing, for a fee, but they do not require the panel to consider the supplemental filing.

As a panel in an old (2000) Forum UDRP decision, Electronic Commerce Media, Inc. v. Taos Mountai, NAF Claim No. 0095344, wrote: "[T]he Supplemental Rule could not require Panels to accept these supplemental filings because that would violate Uniform Rule 12 of the ICANN Policy, which vests the discretion to request and accept supplemental materials solely with the Panel. No provider's Supplemental Rules can override the Policy or Uniform Rules and the discretion they vest in the Panels appointed thereunder."

While it may be unusual for a Forum panel to disregard an additional filing in a UDRP case, it is clear that paying a fee under the Forum's Supplemental Rules does not guarantee that an additional filing will be considered. In other words, at least some Forum panels require a complainant to establish the appropriateness of an additional filing, just as in UDRP cases at WIPO.

Because it's impossible to know if a supplemental filing is going to be considered until after it has been submitted, parties in UDRP proceedings should include all of their factual and legal arguments in the only document they are entitled to file (that is, the complaint or the response) — even, in the case of the complainant, proactively addressing those issues that the respondent is likely to raise.

By Doug Isenberg, Attorney & Founder of The GigaLaw Firm – Learn more by visiting The GigaLaw Firm website. Doug Isenberg also maintains a blog hereVisit Page
Follow CircleID on
Related topics: Domain Names, Law, UDRP
SHARE THIS POST

If you are pressed for time ...

... this is for you. More and more professionals are choosing to publish critical posts on CircleID from all corners of the Internet industry. If you find it hard to keep up daily, consider subscribing to our weekly digest. We will provide you a convenient summary report once a week sent directly to your inbox. It's a quick and easy read.

I make a point of reading CircleID. There is no getting around the utility of knowing what thoughtful people are thinking and saying about our industry.

Vinton Cerf, Co-designer of the TCP/IP Protocols & the Architecture of the Internet

Share your comments

Good piece John Berryhill  –  Aug 15, 2016 1:16 PM PDT

What I have seen in practice, and heard from UDRP panelists, is that unsolicited supplements are almost never helpful in resolving the dispute.  Quite frequently, the complainant is surprised that there was a response at all, and seeks the opportunity to (a) respond to tangential points which are not germane to the UDRP elements themselves, or (b) reframe the argument.  On point (a), I've seen complainants go on at length to refute an argument of RDNH, not realizing that if they are spending effort "defending" the case, they are already losing the case.  On point (b), I've seen a four-sentence complaint, "supplemented" by a fifteen page brief.

While UDRP panelists are, in general, generous with their time, and given the token compensation consider it more of a public service, I think some parties fail to understand that UDRP panelists are not salaried judges with a phalanx of clerks to sort out the arguments.  I cannot imagine being paid $750 to decide a case, and after a fulsome complaint and response, reacting to supplemental arguments and evidence with, "Oh, joy, more stuff!" My further understanding is that while the NAF charges an additional fee for supplemental filings, that fee is not paid over to the panelists, on whom the actual burden of dealing with them rests.  I haven't checked whether that policy was changed more recently, but there have been panelists who certainly noticed that the NAF was collecting additional fees on the back of their work, without any additional compensation to the panelists.

To post comments, please login or create an account.

Related

Topics

Cybercrime

Sponsored byThreat Intelligence Platform

Whois

Sponsored byWhoisXML API

Domain Names

Sponsored byVerisign

New TLDs

Sponsored byAfilias

IP Addressing

Sponsored byAvenue4 LLC

Cybersecurity

Sponsored byVerisign

DNS Security

Sponsored byAfilias