UDRP provides for a swift resolution of cybersquatting, namely abusive registration of Internet domain names in breach of trademark rights.
The procedure generally takes about 2-3 months, with only one round of written submissions, no discovery, witnesses or hearings taking place.
Neither the Policy, nor the UDRP Rules expressly provide for supplemental filings. Their admissibility is therefore at the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case. Moreover, according to paragraph 12 of the Rules, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.
According to section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ”the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance).”
Supplemental Submissions Denied
Unless requested by panels, supplemental submissions are normally not allowed in UDRP cases.
In those cases where the complainant merely seeks to rebut arguments raised in the response, but could have raised those arguments from the outset, its attempt to file supplemental submission would not be normally endorsed by panels.
This is how the panel decided in the UDRP case concerning the domain name <mundonatural.com>, where the panel found “nothing in the proposed supplemental filings that could not have been raised in the initial Complaint or the amendment thereto”. A similar decision in the case concerning the domain name <svendus.com>, where both the complainant’s and the respondent’s supplemental submissions were not considered, for comprising foreseeable or repetitive arguments with those in the initial submissions.
This can be the situation where information on the respondent is available on the website at the disputed domain name, as the panel found in the case concerning the domain name <greenwealthglobal.com>, or when the investigation by the complainant to prove its claims could have been carried prior to filing the complaint, as the panel ruled in the case concerning the domain name <century.com>.
The same would apply if the complainant seeks to include in its supplemental filing information about themselves that should have been provided from the outset. This is how the panel decided in the UDRP case concerning the domain name <aitch.com>, where the panel ruled that: “[t]he information in the supplemental filing could have been included in the original Complaint. For example, the original Complaint does not include any evidence regarding when the Complainant was founded, when the Complainant first started to use the AITCH trademark or the reputation of the Complainant or the AITCH trademark. The supplemental filing states, without providing any evidence, that the Complainant “has been trading as Aitch since 1996”. This information could have easily been provided in the Complaint.”
Supplemental Submissions Allowed
In those cases where the complainant (or, in more limited situations, the respondent), proves that the supplemental filing is extremely important to the case and it could not have provided the information and/or evidence with its initial submission (complaint, or response, as the case may be), panels may find it justified to accept an unsolicited supplemental filing.
In a recent case, concerning inter alia the domain name <grantify.app>, supplemental submissions were allowed by the panel as both the complainant and the respondent discussed in their supplemental submissions “just one evidentiary issue that is relevant to the case and the Complainant could not have addressed it in its Complaint, as it refers to evidence submitted with the Response.” Namely, the complainant argued in its supplemental submission about evidence with the response about the alleged price paid by the respondent for the domain name in dispute; in its supplemental submission the respondent brought evidence of the respective price being paid. The evidence was relevant for the outcome of the case, as the panel found no bad faith on the respondent’s part, given also the date of the acquisition of the domain name in dispute compared to the (later) date of registration of the complainant’s trademark.
In another UDRP case, concerning the domain name <verabradleyoutlet.com>, the panel allowed the supplemental submission of the complainant on the basis that; “disclosure by the registrar of Respondent’s identity led to the discovery of information that could not reasonably have been discovered absent the additional information regarding Respondent’s identity”. The respondent’s supplemental submission was in its turn allowed for due process.
For the case involving the domain name <goin.com>, the panel allowed the parties’ supplemental submission for “exceptional” circumstances, dealing in that case with demonstrable preparations by the respondent before notice of dispute to use the domain name in dispute in connection with a bona fide offering of goods and services.
There might also be situations where the specific circumstances of the case convince the panel to exceptionally allow supplemental submission of the complainant even if the issues it raised could have been dealt with in the complaint. For example, in the UDRP case concerning the domain name <hedo-resort.com>, the supplemental submission of the complainant dealt with the nature of the business relationship between the parties over many years. The panel decided to admit the filing as “if the filing is not admitted the record before the Panel is incomplete and inaccurate and the Panel considers it necessary to refer to the full record”. The respondent was allowed to file a supplemental filing for fairness.
Another example in the UDRP case concerning the domain name <grainwatch.com>, where the panel allowed a supplemental filing with the English translation of a document on the record, taking into account also that a translation could have easily been obtained by the panel with online tools and the respondent has not objected.
A supplemental submission might be allowed only in part. For example, in the UDRP case concerning the domain name <kaddex.com>, the panel did not admit the supplemental submission of the complainant to the extent it dealt with new arguments that could have been anticipated before filing the complaint, rebuttals of the respondent’s claims or repetition of its claims. Nevertheless, the panel allowed the supplemental submission “to the extent that it refutes the RDNH claim, and to the extent that it ostensibly substantiates the Complainants’ claim to have used the KADDEX mark since 2019 (which is directly relevant to the core issue of bad faith).”
Generally, supplemental submissions are filed by complainants to deal with statements in the response. In few cases, though, supplemental submissions might be filed by the respondent.
One situation is where the respondents seek to address something that occurred after it filed its response.
For example, in a recent UDRP case, concerning the domain name <lovecam.com>, the respondent filed a supplemental submission to inform the panel of the complainant’s registration of the trademark LOVECAM after the filing of the response. The panel allowed the submission as “the filing of the Complainant’s trademark application took place after the Response was filed and could not have been addressed then”.
In addition, in all the above cases, the panels consider the fact that the admission of the parties’ supplemental submissions would not delay the proceedings.
Takeaways
There must be exceptional circumstances in place to convince the panel that the arguments in the supplemental submissions of the parties could not have been dealt in their initial submission (the complainants are mainly those submitting supplemental submissions to answer to issues in the response, but sometimes respondents might file supplemental submissions as well, if new aspects arise after they filed their response). Otherwise, normally such supplemental submissions would be denied.
Since UDRP normally contemplates one round of written submissions, the parties should present in full their claim, respectively their response, from the outset, in their initial submission.
